In the current MPEP guidelines for assessing patentability under 35 U.S.C. 101, there are listed four categories of judicial exceptions: i) abstract ideas; ii) laws of nature; iii) natural phenomena; and iv) natural products. Thus, for pedagogical example, one might discount numerical counting under category (i), the laws of thermodynamics under category (ii), lightning under category (iii), and the chemical elements under category (iv).
Actually, about that last case. Not every chemical element is a natural product. Only 90 of the 118 known elements occur in appreciable amounts in nature. The rest are, by and large, artificially synthesized. Where, then, is the judicial exception in obtaining patents for the remaining 28? This was the question that Glenn T. Seaborg and the Atomic Energy Commission posed to the Patent Office over 50 years ago. Indeed, when the Office rejected Seaborg’s patent applications for americium (element 95) and curium (element 96), Seaborg appealed and won. The patents were duly granted under nos. 3,156,123 and 3,161,462. The first three claims within the former read:
“What is claimed is:
1. Element 95.
2. The isotope of element 95 having the mass number 241.
3. The isotope of element 95 having the mass number 242.”
The phrase “in appreciable amounts” in the previous paragraph deserves some context. Some of the remaining 28 elements were later found to occur in nature, but in such small amounts as to remain undetected until the latter half of the twentieth century. Thus, technetium (element 43), promethium (element 61), and the 26 known transuranic elements (those elements with atomic numbers greater than 92) were first known to science when they were synthesized in a lab. Later, several of the elements were subsequently found to occur in nature (as byproducts of decay processes of more common radioactive elements). In an interesting twist, this latter set of naturally-occurring elements includes americium and curium!
Since most synthetic elements are first reported in the scientific literature, future discoveries are unlikely to be claimed by patents. Additionally, the most stable isotopes of the recent elements added to the periodic table have half-lives of less than a minute. These are thus unlikely to possess practical use beyond furthering fundamental scientific knowledge. Such sentiments were echoed in the 1964 New York Times article covering Seaborg’s appeals victory, which stated that americium and curium “have no known practical uses although they are of great scientific interest in understanding the nature of matter.” Seaborg’s discoveries, however, later found widespread use in smoke detectors and medical and industrial spectrometers. Certainly the future possibilities for the newest elements are slimmer, especially within the two decades’ monopoly allotted by US law. Yet the cases of americium and curium suggest that the pursuit of fundamental and abstract science often takes strange turns into practicality and patentability.