Patenting Improved Articles That Use Proprietary 3rd Party Materials
Under U.S. law, improved articles of manufacture may be patentable if they are novel and non-obvious. Sometimes, an inventor comes up with a new article that is faster, stronger, more flexible, more rigid, lighter, etc. by using new materials to make the article. If the article has never been made with those materials, and if it would not have been obvious to use them, then it may indeed be patentable. The types of articles we are talking about can be almost anything such as consumer products, clothing, sporting goods, medical devices, etc.
A problem that occurs frequently in this scenario is that sometimes the improvements are obtained by using another company's material, such as a proprietary plastic or rubber. The fact that another company developed the material does not, in and of itself, preclude getting a patent for the improved article. However, it does present some challenges.
The key challenge is being able to submit a definite patent claim that captures the novelty of the resulting article. The reason that this is a challenge is that the detailed chemistry of such materials is frequently a trade secret that the supplier does not disclose. As a result, the inventor may only know a trade name that the supplier uses to identify the material. However, the U.S. Patent and Trademark Office forbids the use of trademarks and trade names to identify a particular material in patent claims because they are used to identify a source of goods not the goods themselves.
Where does this leave the inventor who has clearly developed a new and non-obvious product using third party materials? The solution to this problem is typically to use as much compositional information as can be obtained in conjunction with material performance properties so that the material can be distinguished from the prior art.
Use Available Compositional Information
The materials where this type of problem most often occurs are some form of polymer or polymer composite. The suppliers will generally disclose the class of materials at a high level. In other words, they will often say that the material is a "thermoplastic elastomer" or falls into a class such as acrylics, styrenes, styrene-butadiene block copolymers, silicones, etc. That is helpful, but in the world of polymer chemistry, these descriptions are very broad because individual polymers may vary as to their chain lengths, degree of cross linking, average molecular weight, molecular weight distribution, and other properties. This type of more specific compositional information is often not known. The final chemical composition of the resulting polymer will depend on the manner in which the polymerization reaction is carried out, which suppliers are often loath to divulge.
In addition, suppliers sometimes provide further information about the monomers and even their relative percentages that are used to form their products. It is important to obtain product data sheets from the suppliers to see if this information is available. This allows you to describe the composition, to some extent, based on what the material is made from.
Use Material Performance Properties
Polymers are often characterized using a number of different standardized tests. These properties can be used in patent claims to distinguish the prior art. Here are a few examples:
- Tensile strength
- Shear strength
- Percent elongation
- Glass transition temperature
- Hardness
- Modulus of Elasticity
- Creep
- Impact Resistance
- Thermal conductivity
These properties are often defined by specific test methods promulgated by testing agencies such as the American Society for Testing and Materials (ASTM) and the International Organization for Standardization (ISO).
Sometimes inventors only have a qualitative feel for why they believe a particular material is superior to others. However, it helps to link the benefits of the invention to defined performance properties so that patent claims can be drafted which are definite and which distinguish the prior art. Material suppliers typically provide data sheets with values of those performance properties that the suppliers deem to be most relevant. However, if that information is not available, you may be able to hire a third party lab to carry out the necessary tests.
Questions to Consider When Patenting Improved Articles Based on Third Party Materials
Because we are talking about improved articles, we are dealing with a situation where the structure of the article is known in the prior art. Nevertheless, the structure is important and aspects of it may have important synergies with the materials of construction. Here are some questions to consider to help you develop the invention for patenting:
- Why did you pick the material that you picked for the article?
- Are there any structural modifications that you made to the article because of the material you selected?
- Does the material supplier identify any performance property values that seem closely related to your reasons for choosing the material?
- Do you have any sort of final specifications for the finished article that you are trying to meet, and can you link your ability to meet them to specific performance characteristics of the material you selected?
- Did you ultimately achieve any unexpected benefits from using the material you selected?
The answers to questions 1-3 will help you and your patent attorney identify points of novelty that you can include in your patent claims to distinguish the prior art. In considering question 1, it is also helpful to consider what led you to reject any other candidate materials.
Questions 4 and 5 will help you develop reasons why your material selection would not have been obvious. Patent examiners often take the position that "merely" selecting materials for an object is obvious because it involves the application of "routine skill." Showing that your material can meet finished product specifications that were previously unattainable or provides benefits that the prior art would never have predicted can help overcome such obviousness rejections. As a corollary to question 5, you should also consider whether there was a reason that you or others would have initially been discouraged from using the type of material you selected.
Example
An example of a patent that deals with the foregoing issues is U.S. Patent No. 8,690,714, entitled "Golf Ball Material and Golf Ball," which issued earlier this month. For a copy of the patent click here. Obviously, golf balls have been around for quite some time. However, claim 1 of this patent describes a new material used to make a golf ball in the following ways:
- A first component is described broadly as a "thermoplastic elastomer."
- A second component is described broadly as a "flake-like" or "needle-like" filler.
- The relative amounts of the first and second components are specified.
- The claim requires a ratio of "Shore D hardness" to the "logarithm of bending stiffness" of 19.0 or more.
- The claim requires a bending stiffness of 300 kg/cm2 or less.
The specification, but not the claims, references third party, proprietary thermoplastic elastomers and fillers by trade name. Thus, this patent provides a nice example of how to patent an improved article wherein the improvement lies in the selection of proprietary, third party materials.
