Australia: Patents: Old Laws for New Materials

Last Updated: 21 December 2009
Article by Charles Tansey

Alloys are one of the oldest technologies known to man and feature quite prominently in records of cases going back as far as the late 19th century. Looking at old Reports of Patent Cases from a century ago, it is easy to be struck by just how familiar the subject matter is in cases like Thermit v Weldite (production of alloys of aluminium and metals such as chromium, iron, tungsten, molybdenum, nickel, cobalt etc), compared to most of the other long antiquated technology which was in dispute a century ago, such as "improvements in velocipede saddles" or "a machine for stropping razors".

The principles of law in those old cases would also still be reasonably familiar to a contemporary audience. Patent law in relation to alloys is a mature and settled field, with a fairly high level of consistency and predictability around the world. It is also a fairly vigorous area of IP activity, with something like 40,000 PCT applications for alloys filed in 2001, representing about 3% of all applications. The relatively settled nature of patent law as it applies to alloys is quite distinct from the upheaval encountered in other technological areas that have developed more recently, such as genetics or software.

However, the well established principles which have developed around the patenting of alloys are not necessarily limited to metallurgy, but can be applied to a wide range of new materials. Like conventional alloys, many new materials derive their inherent beneficial properties from the interactions between two or more intimately mixed components. For example, the law which developed around alloys is also applicable to materials such as polymer blends, multi-component liquids such as electrolytes, or even multiphase constructs, for example electrochemical cells where the specific nature of the components and the interaction between them gives rise to a significant benefit.

For that reason, it is probably worth keeping the basics in mind when considering whether new materials might warrant or be capable of patent protection.

Ideally, in the chemical or materials fields, a patent is directed towards a composition of matter which must be enabled (properly described), novel (new), inventive (significantly different from what has gone before) as well as useful. However, if a specific composition of matter is known, it is possible to obtain patents such as for a new use for a known material, or for new ways of making it.

In Australia, the rules for assessing whether an invention is properly described is the 1948 case of Mond Nickel Co. Ltd.'s Application which, coincidentally, deals specifically with alloys. It is widely acknowledged that the properties of an alloy are extremely sensitive to the nature and relative amounts of the constituents. A slight change in proportion or composition may mean that a material with radically new properties can result. This fact is often very helpful in demonstrating that a particular alloy is not something known or predictable. However, it can be a double edged sword when it comes to trying to obtain a broad monopoly over a range of materials not expressly disclosed.

For example, say a patent application exemplifies an alloy of 95.0 %A and 5.0 %B. Provided no one had previously made an identical composition, and provided the properties of that alloy were sufficiently beneficial, then generally a patent claim to 95.0 %A and 5.0 %B would be allowed. Patent claims are usually interpreted to take into account the normal and unavoidable level of impurities, and with the normal tolerances encountered in the art (for argument sake, 0.1% in the present case). However, if the applicant pushes the boundaries a little and tries to claim mixtures of 94.0% A/ 6.0%B or 96.0%A/4.0% without further examples, they could be heading for trouble. It is at this stage that the sensitivity and unpredictability of the relationship between the composition and the property of the materials becomes not so helpful to our applicant. The broader claim is likely to be refused because the inventor has travelled beyond the normal tolerances in the art. The only way to support a broader claim would be to flesh out the whole scope of the invention claimed with examples. For binary mixtures, this is simple enough, but for ternary or more complex mixtures, it can become quite a significant task to cover the whole patent space desired. Inventors need to zero in on exactly what the best range of combinations are and work outwards to establish a number of boundary points which can be reasonably connected to establish the full monopoly.

It is also possible to define compositions by what is not in them. For instance if the conventional wisdom has always been to prepare a material with A, B and a trace of C, then a material to just A,B without C may be conceivably be novel and inventive, provided it is useful.

In order for a material to be novel, it needs to be new in the sense of never having existed before. In the 1985 US case of Titanium Metals Corp. v. Banner, (1985), claims to a Ti-Mo-Ni alloy with 0.2-0.4% Mo and 0.6-0.9% Ni were held anticipated by a graph in an article in Russian which showed a single data point corresponding to a Ti alloy containing 0.25% Mo and 0.75% Ni.

While the test for novelty is usually fairly straightforward, the tests for inventiveness can be somewhat more complicated, and can vary from country to country.

In some cases, just being close in value to an existing material is sufficient to cause problems – in the US case Titanium Metals Corp. of America v. Banner 1985 , a claim directed to an alloy having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" was obvious over a reference disclosing two alloys, one with of 0.75% nickel, 0.25% molybdenum, balance titanium and the other 0.94% nickel, 0.31% molybdenum, balance titanium.

Often, an invention will involve focusing on a very specific set of combinations that all give rise to a specific benefit. These sorts of cases can run into trouble with earlier documents that speculate on a fairly broad range of combinations. That can be fairly grey area of the law, but depending upon the circumstances, it may be possible to specifically claim the narrower "species" as a selection over the prior art ("genus").

Another pitfall with inventive step is the possibility that any specific ranges of values of components were arrived at by no more than routine trial and experiment or routine optimization of variables. An unexpected result can be helpful in demonstrating that more than just routine trial and experiment was involved.

So, next time you consider whether that high tech material might be worth patenting, bear in mind that although the substance might not have been contemplated before, the issues of whether it may be patentable were probably settled long ago.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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Charles Tansey
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