One of the most quintessential images of chemical experimentation is embodied by the three witches in William Shakespeare’s play Macbeth. Today, unlike the witch’s stereotypical bubbling cauldron, modern-day experimentation is not limited to chemical synthesis but is increasingly computational.
Researchers in the unpredictable arts can experiment upon the functions, properties, reactions, and structures of chemical compounds with highly accurate computational techniques, writes California Western’s Professor Tabrez Ebrahim in a recent scholarly paper published in the Vanderbilt Journal of Entertainment and Technology Law.
However, writes Professor Ebrahim, patentability requirements do not align with computational research capabilities which allows inventors to file earlier patent applications, develop prophetic examples, and provide supporting disclosure in the patent specification without necessarily conducting any traditional, laboratory-based experiments.
“Computational experimentation enables inventors to describe hypothetical chemical structures and their properties in the specification of a patent application, develop prophetic examples, and file patent claims of a broad genus without necessarily providing adequate support,” says Professor Ebrahim.
While advancements in computational research enable inventors to test hypotheses more easily and quickly, computational capabilities also challenge U.S. patent law doctrines.
The researcher-inventor can run computational experiments to predict chemical functions, properties, reactions, and structures with high accuracy and thereby gain quicker issuance of the patent application. The result would be that the researcher-inventor would gain market exclusivity by preventing others from making, using, selling, or offering to sell an entire class of chemical compounds.
Professor Ebrahim contends that the advent of computational experimentation creates doctrinal challenges with enablement and utility doctrines. One policy consideration is whether there should be limitations to prophesizing early results by inventors. Another policy consideration is whether to change patent examination hiring and training norms to assist in detection of computationally-derived inventions.
Computational technologies make the speculation-experimentation balance a challenge in multiple ways.
First, inventors may attempt to utilize computational tools to claim broadly, even though they know of only a small number of working examples.
Second, computational tools make it easier to develop prophetic examples and file earlier patent applications, such that inventors may file patent applications before proving out the technology.
Third, inventors may use computational tools to formulate small changes to a chemical structure and attempt to claim broader properties than the inventive concept. In sum, computational tools can enable an inventor to make a patent application appear as if experimental data has been achieved when, in fact, there have been only computational simulations of hypothetical experiments, thus resulting in prophetic examples.
“My article makes the normative claim that patent applications for computationally derived inventions should be required to provide a laboratory-based working example to demonstrate utility,” says Professor Ebrahim.
“A requirement of a laboratory-based working example, as I have proposed, would provide an appropriate balance between permitting early disclosure and satisfying the current standard of substantial and specific utility.”
Read Professor Ebrahim’s complete article here.