Nanotechnology is a branch of engineering that deals with the design and manufacture of extremely small machines or devices, as well as the study of properties from the molecular level. It has been around for more than six decades, but only recently has it begun to find its way into commercial products.
Nanotechnology is a major player in many industries, including electronics, pharmaceutics, medical devices, and food production. With a growing presence in these industries comes an increased vulnerability to intellectual property theft. This has given rise to various challenges for those interested in patenting nanotechnology-related inventions.
In this article we will explore some of these challenges and some possible solutions.
Introduction: What Makes a Nanotechnology Patent Unique?
Nanotechnology is an inherently unique patent subject because of the scale and complexity of it. As a result, a patent for this technology is difficult to obtain and, if granted, will be extremely valuable.
As such, an invention that is focused on a specific aspect of nanotechnology, such as a patent for a specific nanometer scale or one for a high-performance (electro-magnetic, thermal, chemical, mechanical) mode of operation, are better targets for patenting than a single generalized application for use in various industries.
If youíre wondering how to file a patent for nanotechnology, itís a good idea to speak with an attorney that specializes in writing and securing patents for emerging technologies. With that said, letís examine some of the difficulties that surround nanotechnology patents.
Difficulties in Securement of a Nanotechnology Patent
The biggest challenge when seeking to patent a particular nanotechnology invention, especially if the invention relates to a new physical property of matter, is that the various elements of patent law can be hard to interpret and apply. Also, there are many levels of innovation that can take place within a single invention that all need to be fully explained and documented.
The Patent Trial and Appeal Board (PTAB) at the USPTO has come up with what it calls the three levels of innovation. However, if the patent is granted, the PTAB almost always hears a non-final objection that can significantly limit what is claimed in the patent and may raise the cost of the patent. Thus, even if a patent is granted, there are legal hurdles to get through.
1) Presumed Infringement is One Problem, But Not the Only One
The single greatest problem for people seeking to patent nanotechnology-related inventions is the assumption that every alleged patent infringement is going to be an infringement of the patent that is actually granted. This assumption has been around for decades but appears to have become more prominent in the last couple of years.
Whether the accused infringer has actually infringed the patent is difficult to determine and may not be important for the claim to be upheld in a lawsuit. What is important for patent holders, however, is the potential impact on the granting of the patent and the recovery by the patent holder of the costs incurred to litigate. This is why the declaration of validity is often taken by a court as the litigant’s best evidence of non-infringement.
2) The Criteria for Nanotechnology Patents is Difficult to Meet
There are three main criteria that must be satisfied when it comes to patenting nanotechnology. These criteria are:
- The invention must be unique.
- It must not overlap with other patents.
- It must have a specific industrial application.
Satisfying all three of these criteria is tremendously difficult, for different reasons. Because nanotechnology is a multidisciplinary technology with a broad range of applications across a multitude of industries, it is difficult to find a single generic claim for a patent covering the technology and will almost certainly not meet all of the criteria.
The same problem affects nearly every technological sector when it comes to patents; as a result, patents in almost all of the industries that are particularly dependent on patents (such as pharmaceuticals, electronics, aerospace, etc.) are extremely difficult to obtain.
3) The Claims in the Patent Have a Wide Range of Different Uses and Applications
Perhaps the single most important consideration is that the claims in the patent clearly describe the invention and demonstrate a reasonable interpretation of what it does, what it is used for, and what will happen to the invention if not patented.
What it does not do, however, is have a full and complete description of how the invention works. When an inventor writes a patent application, they will generally take a broad view of the invention and attempt to explain how a variety of physical and chemical processes would operate if the invention were allowed to be patented.
A patent examiner, however, will not look at this history of the claims and see a full understanding of the invention, but rather something that serves only to show that there are several possible and probable ways the invention can be implemented.
For the patent to be valid, the claims must provide a complete and accurate description of the invention, but not necessarily of the implementation. Thus, if an applicant claims a new process, and then argues that the patent office should accept the claims because it appears that the process actually works, it should not be a matter of surprise to the examiner that the process can be successfully implemented without the claimed invention.
There are multiple ways to implement a process and the applicant is claiming the patent for one of the least likely of these methods. The examiner is not, however, obligated to accept the claim as valid, because it does not describe how the method is actually implemented.
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