The following article appears in the journal JOM, 52 (4) (2000), p. 48. JOM is a publication of The Minerals, Metals & Materials Society

Patenting Materials-Related Inventions

During the past ten years, the U.S. Patent and Trademark Office has issued large numbers of materials-related patents. From 1990 through 1999, more than 2,750 U.S. patents were issued for alloy or metallic composition inventions. In the same time frame, more than 8,350 U.S. patents were issued for metal treatment inventions. As the need for advanced materials increases, the need for patent coverage for newly developed materials will also increase.

According to the U.S. Patent Statute, categories of patentable inventions include a process, machine, manufacture, or composition of matter. These categories appear in U.S. patents as “claims,” which legally define the scope of patent coverage. Materials-related inventions often fall within more than one of these categories, resulting in several possible approaches for claiming patent protection.

Perhaps the most obvious category for protecting materials-related inventions is the composition-of-matter patent claim. The particular constituents of a material, as well as the amounts of such constituents, may serve as a basis for obtaining patent protection. For example, an alloy composition with specified levels of alloying additions or a compound having a particular chemical formula may be sufficiently new and different to warrant patent coverage. However, the possibilities do not end there. Although a particular alloy composition or chemical compound may be known, the alloy or compound may possess some new characteristic or property. This is particularly true when it comes to metal alloys. Alloys containing a new type of metallic phase or combination of phases may be patentable. The microstructure of an alloy may be sufficiently new and different. For instance, an amorphous microstructure may be patentable, where only the crystalline form of an alloy was known before. Controlled crystal grain size or orientation may represent patentable features in some cases.

Composition-of-matter patents are also effectively used to protect inventions relating to composite materials. Such materials are often patented by claiming a new combination of individual phases of the composite or a particular arrangement of the constituent phases. For example, a specific composition, amount, or morphology of ceramic particles dispersed in a specific type of metal matrix may be patentable. A specific composition of a ceramic phase or a metal phase in a cermet material could also represent patentable subject matter. Alternatively, the particular configuration of a composite material may be patentable, such as continuous versus discontinuous phases or a particular order of laminated layers.

When attempting to obtain patent coverage for composition-of-matter inventions, it is often necessary to point to some unexpectedly improved property that is achieved by the material. For example, increased levels of strength, elongation, or fracture toughness may suffice. While a particular metal alloy composition may appear rather similar to prior compositions, it may possess an improved combination of strength and fracture toughness that had not previously been attained by the prior compositions. In addition to mechanical properties, other characteristics, such as improved corrosion resistance, thermal properties, electrical properties, optical properties, or magnetic properties, may be relied upon to establish patentability.

Another category of claims that is frequently utilized to protect materials-related inventions is the process patent claim. While the composition of a material may or may not be patentable, the process for making the material may be sufficiently new and different to obtain a patent. A particular type of chemical process to form a particular composition may be novel. Unique starting ingredients may be used. Processing parameters may be controlled in order to obtain certain desired characteristics of a material. For metal alloys, heat-treatment procedures or other fabrication processes may be sufficiently novel to secure patent coverage. A combination of heat treatment and working operations may result in a wrought alloy product having unexpectedly improved properties. The use of a powder-metallurgy or spray-forming process may represent patentable subject matter when compared with conventional ingot metallurgy techniques, or vice versa. Even if a particular processing technique is generally known, the use of that technique to produce a specific type of material may be patentable. For instance, although it might be generally known to mix and react a refractory-metal powder with boron powder to produce a refractory boride composition, it might not be known to add another metal powder to the reaction mixture to form particles of the refractory boride dispersed in a matrix of the additional metal.

Not only are processes patentable, but the use of a material for a particular application may be patentable in some cases; a new use for a known material may thus represent patentable subject matter. For instance, while a material may conventionally be used as a structural material, its use as a refractory material, or its use as a dielectric material in an electronic device, may be patentable. As another example, a metal alloy conventionally used in high-temperature applications might be patentable when used in significantly different applications, such as cryogenic, abrasive, or corrosive environments. This category of invention often entails claiming a specific apparatus, component, or part made from a particular material. If some performance criteria of the apparatus, component, or part is substantially improved through the use of the particular material, it may be possible to obtain patent coverage based upon the material-related improvement.

Often, the above-noted patent categories of materials-related inventions are intertwined. A new process may be used to make a new material composition that possesses markedly improved properties. For example, a process for making a metal alloy might result in a new microstructure for the alloy, resulting in advantageous alloy properties and, perhaps, making the improved alloy suitable for applications that had not been considered before. In this case, it may be possible to obtain patent claims for the process used to make the material, the composition of the material, and the use of the material in a new application.

Alan G. Towner is a member of Eckert Seamans Cherin & Mellott, LLC.

For more information, contact A.B. Silverman at Eckert Seamans Cherin & Mellott LLC, 600 Grant Street, 44th Floor, Pittsburgh, Pennsylvania 15219; (412) 566-2077; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.