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I have a concept for a technology that requires a currently non-existing material. I can describe the properties of this material. Unfortunately, I have not been able to find a good real-life material for this concept, only materials that would partially work in one way but not in other ways necessary.

I know this is pretty far fetched, but what is the possibility of obtaining a patent (or preliminary patent) for said technology in this case?

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4 Answers

up vote 6 down vote accepted

In the US, one condition for patentability is that the patent specification enable a person of skill in the relevant art to make and use the invention without undue experimentation. A patent application that lacks enablement should be rejected by the USPTO. Further, an issued patent that lacks enablement will be held invalid if the patent is challenged in court. Patents issuing from applications filed after March 2013 can also be challenged on enablement grounds through a post-grant review, but only within the first 9-months after patent issuance.

There have been a number of cases where patents have been rejected for failing to describe how to obtain the starting materials.

Enablement != Working Model: The patent laws do not require that you create a working model (known as actual reduction to practice) before obtaining a patent. For starting materials you may be able to satisfy the enablement requirement if you can describe a process for obtaining the otherwise unavailable material. If you cannot, you might want to bring an expert onto your team to do so.

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Enablement means enabling something that works. It does not mean enabling it to work optimally or efficiently or to be producible in a cost effective manner. With the best material that exists could it be made to work at all? If so you should be able to proceed. –  George White Jan 20 '13 at 22:44
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One of the requirements of a patent is that it enables one of ordinary skill in the art to replicate the claimed invention without undue experimentation. What you describe does not seem to meet this criterion.

In addition, one of the criteria for demonstrating obviousness is that the claimed invention combines known elements to achieve a predictable results. The sketch you draw would likely run afoul of this criterion as well. Though the material you need is not currently known, it seems that the result of combining it with other materials is predictable - given that you are predicting it.

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Given that the patent office has issued multiple patents for perpetual motion machines, which not only don't exist but can't exist, I don't see any reason that the non-existent material would necessarily be a barrier to patenting.

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IIRC the Patent Office rejects applications for perpetual motion machines out of hand and offers no appeal. –  user96 Oct 11 '12 at 16:47
    
... and there's a distinct difference between a device that may not work well or at all in practice (e.g. a gerbil-powered commuter car) vs. conceiving of a device that can only be built of materials or technology that does not exist (negative energy wormhole stabilizer). –  Robert Cartaino Oct 11 '12 at 21:26
    
I think there is a difference between a patent that says it is for perpetual motion, which will be rejected, and one that doesn't say it but actually is. The latter will be patented unless the patent office gets a clue, which it often doesn't. References: is.gd/mNFGeK and is.gd/I5aRXi –  drmime Oct 13 '12 at 8:42
    
This post eludes to the important distinction between (1) getting a patent and (2) getting a valid patent. If you cannot teach how to obtain the starting materials then no patent should issue. However, the PTO might not consider that issue in its processing. The resulting patent could be challenged as invalid or unenforceable, but that shifts a large cost and burden onto the challenger. –  Dennis Crouch Oct 15 '12 at 16:07
    
A purported perpetual motion machine can be patented as a novelty device who's use is that it is fun to start it spinning and watch it go around for a long time. –  George White Jan 17 '13 at 1:03
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Actually, although the above answers are what most would consider correct due to enablement requirements, there is a (perhaps not well-tested, since this situation is rare) supposed exception for something that you enable but for some intervening technology that does not yet exist.

In other words, if the state of the art is "A", you invent "C", which requires "B", but "B" does not yet exist, you may still be able to patent "C" if it turns out that you have enabled "C" once "B" exists. Your rights would not be valid until "B" exists (which raises the possibility that the entire lifetime of you patent could expire before "B" exists).

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"Your rights would not be valid until "B" exists (which raises the possibility that the entire lifetime of you patent could expire before "B" exists)." Doesn't this mean it's unpatentable until B exists? Enablement is a requirement for receiving the patent as much as it is for enforcement. –  m3lvn Dec 14 '12 at 18:06
    
What is the legal theory behind this exception? Is that by law, or jurisprudence? Is it covered in MPEP? –  Gilles Dec 14 '12 at 21:05
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