Feature S mall Science, Big Risk Lessons from the past for protecting nanotechnology By Chid S. Iyer Nanotechnology is the science of the nology by the year 2015, making it a practitioners – patent practitioners who small, but its significance in the world potential technology boom even larger prepare patent applications, corporate N of high technology is potentially huge. than the information boom of the IP personnel who manage patent port- With all the attention being paid to this 1990s. folios, and the patent officials who rapidly growing field, it is no surprise examine and issue patents – it is imper- that it is accompanied by an increased The National ative that they apply the lessons learned interest in obtaining patent protection. from the business-methods experience. The last decade saw a surge in BM Science In the not-too-distant past, a similar patents. After the famous State Street phenomenon occurred in the area of decision, there was a rush to file appli- Foundation business-method patents. Initial eupho- cations. But as the patent office began ria led to an increase in filings, and then to issue a large number of BM patents, to an increase in the number of issued predicts a there followed substantial criticism of patents whose quality and validity were their quality. Largely as a result of this called into question. The patent office criticism, the patent community intro- $1 trillion and patent practitioners responded by duced changes that offer lessons in adopting measures that largely eviscer- avoiding similar problems with nan- market for ated the grounds for criticism. otechnology patents. What lessons from the business-meth- nanotechnology The National Nanotechnology Initiative ods experience can patent practitioners defines nanotechnology as involving apply to the emerging field of nan- by the year research and development at the atomic, otechnology patents? How can we molecular or macromolecular levels – avoid similar pitfalls? the 1 to 100 nanometer range. The tech- 2015. nology must have novel properties and An Emerging Market functions because of its small size, and For businesses, obtaining patent rights there must be an ability to control or The National Science Foundation pre- early could be crucial. However, for manipulate it on the atomic scale. dicts a $1 trillion market for nanotech- The Patent Lawyer 10
Feature continued While the definition of nanotechnology cation is to assign an examiner who is cacies of the domain field to which the is at best arbitrary, industry is clearly knowledgeable in a specific field. business method is applicable. beginning to see its use. Nanomaterials Classifying a nanotechnology applica- are used in materials applications, phar- tion into a class and sub-class is an For BM patents, the patent office creat- maceutical applications, electronics, unenviable task. ed a new class 705 devoted to “appara- and elsewhere. Nanotechnology has tus and corresponding methods for per- resulted in significant revenues in areas To assist in classification, the patent forming data processing operations, in such as recording tapes, chemical- office extracts keywords. In the case of which there is a significant change in mechanical polishing, sunscreens, auto- nanotechnology, this could be challeng- the data or for performing calculation motive catalysis, microarray chips, con- ing because of the its broad definition. operations wherein the apparatus or ductive coatings and fibers. An inventor may describe his invention method is uniquely designed for or uti- as nanotechnology, hoping to jump on lized in the practice, administration, or The future of nanotechnology is diffi- management of an enterprise, or in the cult to forecast. Inventions could sim- processing of financial data.” Examination of ply be amalgamated into existing prod- uct lines and never see light as distinct BM applications are assigned to this “nanotech” products. And converting group. Examiners in this group acquire nanotechnology nanoscience research into usable prod- expertise in the field of BM enabling ucts may be fraught with engineering them to conduct a thorough examina- applications challenges making it costly to pursue. tion. Government funding may lessen the by untrained risk. More than 40 countries are report- The Japanese Patent Office recently ed to have set up initiatives in nan- introduced new classes for nanotech- otechnology. In the U.S., government nology applications. The USPTO examiners can interest peaked with passage of the should follow suit and create new class- National Nanotechnology Initiative of es and subclasses for classification of lead to improper 2000. The law appropriated $3.7 billion nanotechnology applications. One over four years for funding for various approach would be to create a new class rejection simply federal nanotechnology initiatives, for nanotechnology, with subclasses for including creation of the National quantum dots, MEMS, etc. A better because the Nanotechnology Coordination Office. approach might be to create classes for The European Union has earmarked $1 each of the major sub-areas in nan- billion through 2006, while Japan otechnology, such as nanomaterials, examiner does increased funding from $120 million in nanoelectronics and nanobiotechnolo- 1997 to nearly $750 million in 2002. gy, each containing further sub-classes. not understand Having classes dedicated to nanotech- It is clear that this activity will lead to a nology would also mean that, over the technology. boom in patenting akin to the surge in time, personnel in the group would business-methods patenting. But there build up expertise in the field and are problems related to nanotechnology enhance institutional knowledge. patenting, and lessons to be learned from the BM experience. the nanotech bandwagon, when the Two-tier Examinations invention may not strictly belong to the field. Other inventors may omit the A major criticism of BM patents was USPTO Classification term, instead describing their contribu- that they were poorly examined. The Nanotechnology is a confluence of sci- tions as “quantum dots,” or “MEMS.” patent office took the criticism serious- entific and engineering disciplines, ly and implemented corrective meas- combining chemistry, physics, biotech- The patent office faced similar prob- ures. In part, the problem was alleviat- nology, electronics, engineering and lems with BM inventions, which like- ed as examiners acquired institutional other fields. This creates problems for wise frequently cross disciplines. They expertise in the area. Additionally, the the patent office in initially classifying often involve the software/business patent office started using a two-tier applications. A key purpose of classifi- aspect of the invention as well as intri- system of examination for some BM The Patent Lawyer 11
Feature continued applications. After an examiner pre- applicant to educate the examiner and Searching Prior Art pared an Office Action, some would be get a reasonable set of claims allowed. reviewed by a set of senior examiners, On the other hand, overbroad claims Another concern with nanotechnology particularly in cases related to whether could also issue if the examiners do not is that the process of searching for prior the subject matter was patentable. understand the nuances of the technolo- art is complicated. By definition, nan- gy. Overly broad patents may improper- otechnology covers a broad class of The patent office should consider a ly exclude competitors from entering the materials and systems. The fact that the similar two-tier review for nanotech- market. This could cause inventors to classification systems are neither suffi- nology applications. After the examina- lose faith in the overall patent system. ciently defined nor descriptive enough tion, the Office Action should be sent to to account for the unique features of a group of senior examiners for review. Practitioners can attempt to educate the nanotechnology further complicate the While the examiner in charge of the PTO on nanoscience by opting for per- searching process. An invention based application may be specialized in one sonal interviews during patent prosecu- on a general idea may lead to several area, it is likely that the reviewing tion. They should participate in various patent applications covering many group will include examiners trained in customer partnership meetings held at products or markets. other disciplines. the PTO. Additionally, PTO officials should be invited to present at major While the domain of prior art is the sum Examination of nanotechnology appli- small tech conferences and seminars. total of publications by the scientific cations by untrained examiners can lead Further, patent applicants should community, an overwhelming percent- to improper rejection simply because employ language in patent applications age of cited prior art consists of issued the examiner does not understand the whose meaning is well recognized in U.S. patents or published U.S. applica- technology. This shifts the burden to the the technology. tions. This is of concern because pub-
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