A new carbon allotrope – when do you know enough to file a patent application?
Key considerations for inventors

Researchers at the University of Massachusetts in Lowell have recently reported the discovery of a new carbon allotrope, which is being referred to as U-carbon or adamantia.  Like many scientific discoveries, this new allotrope was serendipitously discovered whilst trying to synthesise another carbon allotrope, pentagraphene, which has been predicted but never synthesised.  The new allotrope was formed when 2,2-dimethylbutane was reacted with a copper catalyst at 800 °C in a chemical vapour deposition (CVD) oven.  It was anticipated that the branched structure of 2,2-dimethylbutane would retain its carbon backbone rather than breaking down into carbon atoms and that the carbon groups would link together into the pentagonal cells of pentagraphene.  However, an entirely different structure was formed.

The new structure is hypothesised to consist of corrugated carbon layers with six or twelve atom rings that are linked together by carbon bonds. Although preliminary experiments agree with this hypothesis, the structure has not yet been conclusively shown experimentally, e.g. by X-ray crystallography.  In terms of physical properties, the material is reported to be ferromagnetic and highly reflective.  As such, it has potential applications in lightweight coatings, medical products and electronic devices.  It has been suggested that it could be useful for making biosensors or drug-delivery carriers due to the nontoxicity of carbon, which could be magnetically interrogated or directed to diseased tissue in the body.

Given the potential applications of this new material, it is likely to generate significant interest from those working in industry as well as academia.  Therefore, those responsible for the initial discovery may have considered applying for a patent to monopolise this discovery ahead of publicly disclosing it.  However, before embarking on the patent application process, it is wise to consider whether there is actually enough information to successfully obtain a patent, or whether further work is required.

A patent for an invention provides the proprietor with the right to exclude others from certain acts, such as making, selling, and importing the invention without permission.  In exchange for this exclusive right, the proprietor is required to provide enough information so that others can reproduce the invention, which helps promote further innovation.  In patent terms, this means that the invention must be “sufficiently disclosed”.  The invention must be sufficiently disclosed at the time of applying for a patent – it is impossible to rectify this after filing.

A patent relating to a new carbon allotrope can provide protection for the new carbon allotrope itself as well as the process for making it.  For both forms of protection, the application will need to provide the method for preparing the new material in enough detail to ensure it is sufficiently disclosed.  You will also want to include experimental data that demonstrate the characteristics of the carbon allotrope that has been made.  This will help in seeking protection for the carbon allotrope itself.  For a new carbon allotrope, possible experimental data could be X-ray crystallography data, Raman spectroscopy or IR spectroscopy demonstrating the new structure.  If more than one piece of experimental data is available then it is worth considering including them all in the patent application to help provide a convincing case about the identity of the new allotrope.

The prospects of obtaining a patent would also be improved by providing data that supports the presence of an advantage associated with the new carbon allotrope.  This can help demonstrate the surprising nature of the invention and so justify the grant of a patent in the eyes of the patent office.  For example, if the application describes a new carbon allotrope with specific magnetic behaviour then the magnetic properties should be described and enough evidence provided in the application to support the conclusion that this effect is achieved by the new carbon allotrope.

Overall, it can be difficult to judge when you have enough data to file a patent application.  If you file too early and with too little information then you run the risk that your application will be considered to lack a sufficient disclosure.  Whereas, if you wait too long for more data to be generated then you run the risk of someone else filing an application first, or disclosing the invention publicly.  This will make it harder, or even impossible, to obtain your own patent.  This could also mean that someone else then has the right to restrict your activities in the very area that you have been developing.  There may be other factors involved too, such as your own imminent public disclosures, which may affect when an application needs to be filed.  Each of these factors has to be weighed-up when determining whether it is the correct time to apply for a patent or not.