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The technology buzzword of the day is indisputably “nanotechnology.” Nanotechnology is generally defined as the development and use of structures that have a size of only a few nanometers, and embraces many technical arts: biotechnology, chemicals, computers and mechanical devices are just a few examples. And the government is starting to pour money into nanotechnology research. At the end of 2003, Congress enacted, and President Bush signed, the 21st Century Nanotechnology Research and Development Act, Pub. L. No. 108-153, which authorizes $3.7 billion over 2005-2008 for the funding of nanotechnology research and development through grants, establishes nanotech facilities and research centers, and importantly, accelerates commercialization of nanotech inventions. With the increased funding and interest, as one might expect, inventions in nanotechnology are arriving at the U.S. Patent and Trademark Office (PTO). The PTO has undertaken a nanotechnology customer partnership, which interacts with the public and addresses the issues related to patent prosecution for inventions in nanotechnology. See www.uspto.gov/web/patents/nanotech/meet091103.htm. Through the partnership, the PTO actively seeks speakers who can give technical training to patent examiners in nanotech, and also requests suggestions for information sources for the searching of nanotechnology-specific prior art. The major concerns being initially addressed in the partnership are the classification and examination of patent applications for nanotech inventions. The classification of an incoming patent application initially determines which technical group and art unit will examine the application, and also determines the technical area(s) of search to locate potential prior art to the patent application. Generally, the existence of prior art that either discloses or makes obvious the invention claimed in the new patent application will block issuance of a patent. The U.S. Patent Classification System organizes all U.S. patent documents, which include issued patents, published applications and prior art references, based upon their common subject matter. The PTO does not currently have a specific classification for nanotechnology-related inventions, but it is taking a step-by-step approach to see if a specific classification for nanotechnology will ultimately be necessary. 10 POSSIBLE CLASSES A potential problem with the lack of a unique classification for nanotechnology-specific prior art is that the examiner may have a difficult time locating the best available prior art to a nanotech patent application. In fact, the PTO currently designates 10 classes as potentially containing prior art for “nanoproducts.” These range from Class 57, Textiles: Spinning, Twisting and Twining; to Class 435, Chemistry and Molecular Biology and Microbiology; to Class 438, Semiconductor Device Manufacturing Process. If the examiner is unable to locate the most relevant prior art because of an odd classification, the examiner will not be able to determine properly the novelty of the new patent application. The other concern about newly filed nanotech patent applications intertwined with classification is which specific technical group art unit and examiner will examine the application. The PTO does not have a specific technology group to handle nanotech inventions — conversely, the PTO has currently designated seven technology centers as potentially handling nanotech inventions. Even in view of the breadth of nanotech, the PTO does not plan to create a specific technical art unit with examiners solely devoted to examining nanotech inventions. Another problem that may arise from the novelty of nanotech patent applications is that there are no established guidelines or case law specifically to govern the format and requirements for patenting a nanotechnology invention. That is, while some nanotech inventions can easily be examined at the PTO in the same manner as other inventions, there may be some novel aspects of nanotech inventions that merit a patent based upon a ground that the PTO does not currently recognize. In the past, when confronted with a new area of technology and potential inventions, such as biotechnology, the first reaction of the PTO was to say no to a patent. In the 1980 case of Diamond v. Chakrabarty, 447 U.S. 303 (1980), the U.S. Supreme Court had to settle the issue that biotechnology, and specifically that a genetically engineered life form, is patentable. In 1972, Ananda Chakrabarty filed a patent application relating to his invention of a human-made, genetically engineered bacterium capable of breaking down crude oil, a property which was not possessed by any naturally occurring bacteria. The PTO rejected the patent application on the ground that living things were not patentable subject matter. The Supreme Court held that the bacterium was in fact patentable, as patentable subject matter includes “anything under the sun that is made by man.” Now the PTO is faced with nanotechnology. Given the newness of the technologies involved, the patentability of some nanotech inventions may ultimately be addressed by the courts rather than by the PTO. One distinct advantage the PTO has in its early attempts to address nanotech inventions is that the incoming patent applications are not an instant deluge forced on the PTO by judicial fiat as has been the case with patent applications in other technologies. A recent example of a flood of patent applications occurred when business-method patents were allowed. In State Street Bank & Trust v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998), the U.S. Court of Appeals for the Federal Circuit started to uphold the validity of patent applications that were directed to “business methods.” This shift in law removed an earlier bar to the patenting of business methods and resulted in a deluge of patent applications to the PTO. Most of the patent applications were directed to a single technical art unit aligned with software inventions, and the backlog of business-method patents awaiting examination ballooned to such an extent that an inventor had to wait on average more than two years before receiving an examination from the PTO. The backlog exists to this day. The PTO has only recently come to grips with the explosion of business-method patent applications through the creation of special guidelines for examiners to review business-method applications to determine if they merit a patent, and hiring examiners to meet the backlog of patent applications. And nanotech inventions can create even more of an impact on the PTO than business-method inventions as they are not a wave of a single species of invention but rather an evolving technology with a potential Pandora’s box of applications. UTILITY AND NONOBVIOUSNESS The diversity of nanotech applications necessarily means that many technical art units will be involved, as the PTO agrees, but at first blush, the nanotech applications would not appear to pose a significant problem to the current examination process. Undoubtedly, many of the nanotech inventions will meet the traditional bases for patentability, such as novelty, nonobviousness and utility. But there are some foreseeable wrinkles in the patentability of nanotech inventions that will likely require special knowledge from the patent examiner. For example, the utility and nonobviousness of a nanotech invention may pose interesting questions in some circumstances. Utility requires that the invention be a “new and useful process, machine, composition of matter, or new and useful improvement thereof.” 35 U.S.C. 101. Nonobviousness requires, among other things, that the invention not be obvious to a person of skill in art in the subject matter of the invention. 35 U.S.C. 103. Due to these requirements, the mere minimization of a known structure would be considered a simple change in size and would not be patentable absent some other utility and novelty that occurs from the minimization. To illustrate this point, assume a patent application is submitted that solely discloses and claims a mechanical gear having a diameter of 5 nanometers. This claim could rightly be rejected as lacking any utility and as an obvious variant of a gear. However, if the same 5-nanometer gear is disclosed in the patent application as part of a nanomotor that exerts a motive force on nanoscale objects, then the rejections can be avoided. The gear is then shown as clearly having utility as part of a nanomotor, and it can be argued that it is not obvious to one of skill in the art to construct a gear of that size absent the motivation of the nanomotor. Thus, the familiarity of the patent examiner with the subject matter is important to deal with this potential subtlety and both to determine the utility within the field of nanotechnology and to appreciate the level of skill in the art. Another potential problematic issue with nanotech inventions is that they can embrace several technological disciplines in a manner never before encountered. Imagine that an inventor submits an application claiming a micro-organism that is genetically engineered to etch a mask on a substrate — the underlying material upon which a device, circuit or other layer is formed which, along with other chemical processes, creates a gate array — an integrated circuit made up of an arrangement of interconnected transistors. (This technology actually exists.) One could claim as patentable the microbe, the process and the product so that each claim embraces a different technical art — the biotechnology, chemical and electrical arts. And while the novelty of the patent application for this first micro-organism appears clear, the novelty of the 10th, 100th and 1,000th application directed to this type of micro-organism becomes less so and puts the onus on the patent examiner to do a thorough examination. While this example appears extreme, one has to realize that the PTO receives more than 300,000 patent applications a year, and consequently, an explosion of nanotech patent applications filings in any one technical area is a distinct possibility. Moreover, if significant problems arise with nanotech inventions at the PTO, it is unlikely that patent-seekers will fare better outside the United States. Foreign patent offices and international organizations are attempting to address nanotech inventions just as the PTO is, and some have even gone further than the United States and have undertaken unique classification for inventions in nanotechnology. In the International Patent Classification system promulgated by the World Intellectual Property Organization, a specific classification has been designated for “Nanotechnology”: IPC Class B82B. And the Japanese Patent Office has also instituted its own internal patent classification similar to the International Patent Classification system, called “Micro-Structural Technology; Nanotechnology.” However, notwithstanding the early adoption of classification, foreign patent offices, such as those of Europe and Japan, have historically been reticent to allow patents in new subject-matter areas. Many foreign patent offices mirror the United States in their requirements of novelty and utility but tend to have a stricter requirement of utility. To the extent that those patent offices encounter problems with new inventive subject matter, they have typically waited to see how the PTO handles the problems first and then formulate their own positions. For example, the European Patent Office only issued a definitive directive on the patentability of biotechnology in 1996, and expressly refuses to allow patents for business methods or software. See Art. 52(2) European Patent Convention. Foreign patent offices will probably lag behind the PTO in permitting patents for nanotechnology with new technological novelty and would view with skepticism any unique U.S. treatment of nanotech inventions. In contrast to the stark arrival of biotech and business-method inventions at the U.S. Patent Office, at least the onset of nanotech inventions is completely anticipated. The PTO is making its best attempts to address the inevitable problems that will occur during prosecution of these inventions and is involving the nanotechnology industry at an early stage. By taking the initiative with nanotechnology, the PTO may well stave off the problems that have hampered patent prosecution in other emerging technologies. Nonetheless, when the trickle of nanotech inventions becomes a flood, one can only hope that the PTO is up to the task of dealing with the new subject matter. Regardless of the government’s level of preparedness, industry is certainly ready to seek patents for nanotech inventions. Lance D. Reich is a patent attorney and partner in the nanotechnology practice group at Atlanta-based Arnall Golden Gregory www.agg.com. If you are interested in submitting an article to law.com, please click here for our submission guidelines.

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