Why Fullerenes Aren't Patented

If you’re familiar with Rice’s high-profile scientific contributions, you are likely aware that the efficient production method of fullerene, or a “Buckyball”, was discovered by our Richard Smalley and Robert Curl, and Harold Kroto of the University of Sussex. The method is important because it essentially allowed them to discover the C60 form and other uses of fullerenes.

"Dr. Richard E. Smalley and Dr. Robert Curl, posing with a Buckyball." (2000) Woodson Research Center, Fondren Library, Rice University: https://hdl.handle.net/1911/37139.

 

The three of them were awarded the 1996 Nobel Prize in Chemistry for their discovery. 

"Richard Smalley receives Nobel Prize." (1996) Rice University: https://hdl.handle.net/1911/71843.

After the team discovered fullerenes, Dr. Smalley proceeded to help Rice University obtain numerous patents throughout the rest of his career. My search listed a total of 79! 

Search results in Patent Public Search for Dr. Smalley and Rice

The first patent for Dr. Smalley and Rice was in 1993, US 5227038A, “Electric Arc Process for Making Fullerenes”; see it here. This, along with the next three (granted in 1994, 1996, and 1997), are all for fullerene-making processes. The rest are focused on carbon nanotubes, which stem from fullerene’s discovery. The last patent granted listing Dr. Smalley as an inventor was granted posthumously, in 2013: US 8562935, “Amplification of Carbon Nanotubes via Seeded-Growth Methods”.

But why wasn't there a patent for the fullerene, the famous Buckyball, itself?

It took me a few minutes to work it out.

Anyone familiar with the rules for patentability—or what can and cannot be patented—probably already guessed (and if not, visit the Research Guide here for more explanation by clicking on the “Patentability” tab).

According to the USPTO and the Manual of Patent Examining Procedure (MPEP) chapter 2100, natural phenomena cannot be patented. Fullerenes are natural phenomena, and therefore un-patentable.

However, patentability does allow processes, so many of Dr. Smalley and Rice’s patents are for fullerene-related processes.

Collected papers from Richard Smalley’s career with Rice, from the 1970s to his death in 2005, are maintained by the Woodson Research Center. Most of the materials are from 1990 - 2005, the era when his fullerene research was making major waves.

That’s one patent mystery easily solved.

But…

You know what is really curious? Robert Curl isn’t listed as an inventor on any Rice-owned patents related to fullerene work that also list Dr. Smalley. Drs. Curl and Smalley worked together on the team that discovered fullerene production; the eponymous Smalley-Curl Institute combines their names. And Dr. Curl appears in a large number of prior art references within these patents. Did they work together once and then call it quits?

Dr. Curl and Rice have their own patents, let me know if you want to see a future post about them!