LK-99: Dream Material or Patent Dilemma?

Greetings from Pine Patent Law Office.

As a patent attorney, I will provide a detailed analysis of the examination status of the LK-99 room-temperature superconductor. While I am not a direct expert in the field of superconductors, I aim to review this case based on my specialized knowledge of patent law and the examination process.

LK-99: A Dream Material?

In July 2023, the scientific community was abuzz when a Korean research team claimed to have discovered 'LK-99', a material exhibiting superconductivity at room temperature and pressure. This appeared to herald the discovery of a 'room-temperature superconductor', a decades-long dream of scientists. Superconductors are materials with zero electrical resistance, and if one that operates at room temperature were developed, it could bring revolutionary changes in various fields, from lossless power transmission to magnetic levitation trains and ultra-high-speed computers.

However, recent examination results from the Korean Intellectual Property Office(KIPO) have raised questions about LK-99's superconductivity, leading to the issuance of an initial rejection notice. The researchers and their patent attorney are currently responding to this. The rejection reasons related to joint application regulations have also been raised, but these are expected to be resolved through agreement between the parties. However, the primary issue still at hand is the reproducibility of the invention.

Reproducibility: The Core of Fundamental Patents

For fundamental patents like LK-99, proving reproducibility is crucial. This is not only for patent registration but also for assessing the actual value and applicability of the technology. Reproducibility means the ability to obtain the same results when repeating the same experiment under identical conditions. For a scientific discovery to be meaningful, other researchers should be able to achieve the same results using the same methods. The more impactful the discovery, like LK-99, the more rigorous the verification process needs to be.

The examiner's citation of lack of reproducibility as a main reason for rejection can be understood in this context. It appears that the notice was issued on the grounds that the Korean Superconductivity and Cryogenics Society and research institutions attempted to synthesize LK-99 but could not confirm its superconductivity, thus making it impossible to grant the patent.

Ambiguity in Numerical Values and Uncertainty in Element Combinations

The examiner also pointed out that the numerical ranges stated in the patent application were excessively broad. Patents must clearly define the scope of the invention, and overly broad numerical ranges make this difficult. Additionally, the examiner found a lack of clarity regarding the combination of elements constituting the superconducting ceramic compound.

These observations indicate a failure to meet the key patent requirements of 'clarity' and 'detailed description'. A patent should be described in sufficient detail for an expert in the field to replicate it based on the content. In the case of LK-99, this aspect seems to have been inadequate.

Current Status

Currently, the LK-99 patent application is undergoing its fifth extension of the designated period without separate amendments. This appears to be an effort by the research team to secure additional time to prove reproducibility. During the patent application process, extensions of the designated period can be requested when the applicant needs more time to respond to reasons for rejection. However, this is also a race against time. The longer the extensions continue, the longer it takes to register the patent, and the higher the possibility that other researchers may develop similar technologies in the meantime.

If reproducibility is not proven by the scientific community, there is a high possibility of immediate rejection without a final notice of reasons for rejection. This could be quite unfavorable for the LK-99 research team. The final notice of reasons for rejection is generally a procedure that gives the applicant a last chance. However, if reproducibility is not proven, the examiner may decide that sufficient opportunity has already been given and skip this procedure.

Patent Strategy

Even if a rejection decision is made, the research team still has several options:

1. Divisional Application: This method involves separating part of the original application and proceeding with it as a new application. This provides an opportunity to obtain a patent for the remaining parts, excluding the problematic sections from the original application.
2. Request for Re-examination: This is a procedure to appeal the rejection decision and request another examination. New evidence or arguments can be presented during this process.
3. Appeal for Trial: The team can file an appeal against the rejection decision with the Intellectual Property Trial and Appeal Board to have the validity of the rejection decision reviewed again.

These procedures can provide the research team with additional time and opportunities, and if they succeed in proving reproducibility in the meantime, the situation could be reversed.

The situation where the scientific challenge of proving reproducibility intersects with the legal procedure of patent registration presents a considerably difficult problem for patent practitioners. While patent law emphasizes the completeness of the invention and its industrial applicability, it is not easy to immediately prove these aspects for cutting-edge scientific discoveries like LK-99.

Innovation is the driving force that advances our society, but for that innovation to have true value, it must undergo thorough verification and confirmation processes. This is an important principle that applies not only to the patent system but to the overall advancement of science and technology.

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