For the last few years I have been attempting to work with a full professor of chemistry who holds a named chair. He is fast approaching emeritus status and in addition to the other maladies of aging, he tends toward spontaneously bureaucratic demands and is rather hard of listening. His secretary types his correspondence which is written in the officious, pseudo-legalese tone remniscent of a 19th century divorce decree.

Recently, while discussing chemistry with the “judge” by email, I suggested that he look at the patent literature for clues to synthetic procedure. Procedures found in patents may have a general utility and are not automatically claimed. Minimally, a dip in the patent literature broadens ones knowledge of the prior art. Certainly, art found in expired patents has a high likelihood of being up for grabs.

My clumsy and sophomoric attempt at helpfulness sparked a multiparagraph recitation in reply on the anticipatory nature of content in patents and how “such material” is unacceptable for “we in academe”.

Suit yourself, says I. But like any prospector knows, gold is where you find it. And this brings me to a point.

Every week some number of US patents expire or lapse. This continuous stream of expiration represents a situation much like the periodic deposit of placer gold after the spring runoff.  Gold veins in the walls of the canyon spall and fracture allowing gold nuggets and dust to tumble into the creek.  Prospectors who know what to look for can pick up the occasional nugget of art that has fallen into the public domain.

Granted, expired art may be 17 years out of date, but many kinds of compositions and transformations in chemistry are not subject to the expiration of utility. Many kinds of oxidations, reductions, alkylations, halogenations, functional group transformations, etc., remain quite useful over time. What changes over time are the economic and regulatory compliance issues. It is possible to make C-C bonds without a platinum group metal, triflate, and boron.

The value of expired patent art is well known by the pharmaceutical industry. Pharma companies will fight like wounded bears to get extra days added to their patents or otherwise attempt to extend claimed art as far into the future as possible with formulation or other schemes. They know that the day after a cash cow drug goes off patent, there will be generic versions on sale by opportunistic producers.

Prior to June 8, 1995, utility and plant patents were allowed for a period of 17 years with the 17 year clock starting from the application date and the period of enforceability beginning on the issuance date. From June 8, 1995 onward, utility and plant patents are valid for 20 years.

It is in the nature of scientifically minded folk to be forward looking and lavish extra attention on the latest techniques.  In our enthusiasm for the new and exciting, we may forget the vast storehouse of knowledge accumulated over the last 100 years of chemical research.

There is an ever increasing store of public domain art at the patent office waiting to be extracted by those who have the interest to do so. If you do decide to adopt some expired art, it is worth paying attorneys fees to make sure your judgement is sound and to look for related patents that may be problematic. Due diligence is money well spent.

It is true that patents are written by lawyers with little interest in providing too much enablement to the public. But these lawyers also know that playing games with enablement is contrary to the intent of the sworn statements in the application and may ultimately weaken a patent during litigation. A patent isn’t a peer reviewed paper. But, to Phosita, it can be a rich source of clues on how to perform some particular expired art that may serve as the basis of a product or process.

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