Headlines earlier this summer trumpeted news that a team of researchers in South Korea had created a material called LK-99 that behaved as a superconductor at room temperature and ambient pressure. The scientific press and even popular and social media initially reacted with unbridled enthusiasm because, if the claim could be confirmed through rigorous testing, it would revolutionize modern technology.

The discovery of a material that acts as a superconductor under ordinary conditions has been called nothing less than a “holy grail” of modern physics. Conventional materials display at least some amount of electrical resistance under ordinary temperatures and pressures, which causes energy to be lost as heat when electricity passes through them. In contrast, superconductors can conduct electricity without resistance, which allows electricity to flow without energy loss.

Previously known superconductors operate only within extremely limited and difficult to maintain parameters. For example, mercury exhibits superconductivity when cooled to within a few degrees above absolute zero, while certain copper-containing compounds exhibit superconductivity under ambient pressures at “warmer” temperatures in the neighborhood of minus 140° C.

The discovery of a superconductor that could operate at ambient temperatures and pressures would enable such things as levitating trains and faster, more energy efficient computer chips, and ultra-efficient electrical grids that could reduce global warming. And, of course, any company that owns a patent covering this elusive superconductor would have an almost unlimited ability to monetize the revolutionary breakthrough.

Unfortunately, the dream of LK-99 changing our world seems to have been shattered within a matter of weeks. Shortly after news of LK-99 reached the mainstream media, researchers from laboratories in multiple countries reported that they could not replicate results showing that LK-99 behaved as a superconductor, and a consensus quickly developed that the Korean team’s results were in error. Consequently, the search for a room temperature superconductor appears to be continuing.

Not surprisingly, LK-99 is the subject of a patent application entitled “Room-Temperature and Atmospheric-Pressure Superconducting Ceramic Compound and Preparation Method,” which published as WO2023027537 on March 2, 2023. The published application sets forth claims for the specific compositions of “a superconductive ceramic compound,” as well as for methods covering the steps of synthesizing the recited compound.

In light of the prevailing belief that LK-99 is not, in fact, a superconductor as initially believed, the value of any patent that would exclude others from making or using the material would seem to be of little value. However, the question remains as to how the patent offices will address the LK-99 patent application.

In the United States, as with other breakthrough patent applications that violate accepted physical principles or simply turn out to be too good to be true, the US Patent Office will be guided by the foundational requirement that a novel invention must have utility in order to be patentable. See 35 U.S.C. §101 (providing that an invention can be patented if it is new and useful).

When a patent application is filed, the patent office has the burden of challenging the presumptively correct assertion that the claimed invention has utility. If the patent examiner is able to provide evidence showing that one of ordinary skill in the relevant art would reasonably doubt the asserted utility, then the burden shifts to the patent applicant to prove utility. In re Brana 51 F.3d 1560, 1566 (Fed.Cir. 1995). The patent will then issue only if the applicant can meet this burden and establish the invention has utility.

In the context of an invention like LK-99, utility may be analyzed as a question of operability, and the examiner may focus on the question of whether the claimed invention works as it is described. How the operability inquiry operates to prevent the patenting of breakthroughs that do not pan out is illustrated in a famous case involving the field of cold fusion.

Present day nuclear power plants operate by splitting heavy atoms such as uranium in a process called nuclear fission. The reaction releases large amounts of energy, but has many well-known disadvantages such as the creation and possible leakage of radioactive waste.

Nuclear fusion, a process that operates by fusing hydrogen atoms to create helium, has the advantage that it could create virtually limitless energy without creating radioactive waste. Among the many difficulties that have prevented the development of feasible nuclear fusion reactors, however, is that they have required temperatures on the order of one-hundred million degrees to operate.

Remarkably, two researchers announced in 1989 that they had created a nuclear fusion reaction in their laboratory at room temperature in a process that was christened “cold fusion.” The shocking reports of their investigation generated even more fanfare than the announcement of a room temperature superconductor did in 2023. However, just as happened with LK-99, no other researchers could replicate the purported reaction, and the cold fusion breakthrough was quickly refuted.

Nonetheless, another researcher continued to pursue patent protection directed to aspects of the discredited cold fusion technology. During the resulting examination, the Patent Office presented references showing that the claimed invention could not be replicated, which constituted substantial evidence that one of ordinary skill in the relevant art would reasonably doubt the asserted utility. When the applicant could not present rebuttal evidence, the application was rejected. In re Swartz, 232 F.3d 862 (Fed. Cir. 2000).

If the inventors of LK-99 continue to pursue patent protection, it appears the result would be similar to In re Swartz. The examiner will be able to present evidence that the material is not, in fact, a superconductor at room temperature and, therefore, that one of ordinary skill in the art would reasonably doubt its utility. Unless the inventors are able to rebut that evidence, which appears to be unlikely based the widely reported inability to replicate the original findings, the application would be rejected as lacking utility.

As these examples illustrate, the utility requirement, particularly as it is applied through the operability inquiry, acts as a gatekeeper to prevent patents from issuing on revolutionary “inventions” that turn out to be inoperable. It has been applied to deny patents on failed ideas like cold fusion and, potentially, to LK-99, as well as on fanciful inventions like perpetual motion machines. Fregeau v. Mossinghoff, 776 F.2d 1034 (Fed. Cir. 1985). Along with other basic requirements for patentability, the utility requirement serves the underlying purpose of advancing technological progress by encourage valuable research and development efforts without permitting patents to prematurely issue on inventions that have not truly come to pass.

This article was originally published on World IP Review.