Originally published in International Fiber Journal, June 2004

Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Nanotechnology’s potential to revolutionize the world led to a nine-fold increase in Federal funding for nanotechnology research and development in the last seven years, growing from $115 million in 1997 to $950 million in 2004. At the same time, worldwide government funding for nanotechnology R&D has increased from $400 million annually to $2 billion. Far from a government monopoly, however, large industries in the U.S. currently provide about half of the funding for domestic nanotechnology R&D, amounting to about $2 billion per year.

In the textile industry alone, some experts predict that nanotechnology will become a $450 million dollar business worldwide by the year 2006 and involve improvements in the properties of textile products such as flame resistance, liquid repellency, stain resistance, wicking, and wrinkle resistance. Nanotechnology also can improve the bottom line of production processes, resulting in textile products with reduced cost, weight, and frequency of defects. Other potential uses involve the integration of nanoscale computers, sensors, and machines into textile products. Opportunities abound to identify additional uses, create innovative products, and develop potential markets.

Nanotechnology Defined

The definition of nanotechnology used by the National Nanotechnology Initiative requires that nanotechnology incorporate each of three elements: (1) research and technology development at the atomic, molecular, or macromolecular levels on a length scale in the range of about 1 - 100 nanometers; (2) the creation and use of structures, devices, and systems with novel properties and functions because of their size; and (3) the ability to control or manipulate on the atomic scale. A nanometer is a billionth of a meter. To put that in perspective, the diameter of a typical filament reeled from a silkworm cocoon is about 20 microns, or 20,000 nanometers.

Protecting Nanotechnology Inventions

Technical textile companies conducting nanotechnology R&D need to protect their intellectual-property assets. Patent applications maturing into issued patents provide the primary means of obtaining that protection. A patent examiner in the U.S. Patent and Trademark Office examines each application to ensure that the claimed invention meets the statutory requirements for patentability, including being both new and not obvious in light of prior-art information already known to the public. Ideally, the examination process should ensure that the protection afforded to the applicant is not too broad, unfairly stifling competition.

Currently, the Patent Office is scrambling simply to keep pace with the ongoing rapid progress in nanotechnology. Interestingly, the Patent Office’s approach to nanotechnology inventions differs significantly from its earlier way of dealing with similar problems with inventions in the fields of biotechnology and business methods.

Originally, the Patent Office took the position that neither biotechnology inventions nor business methods were patentable. But decisions by the Supreme Court in Diamond v. Chakrabarty (1980) and the U.S. Court of Appeals for the Federal Circuit in State Street Bank & Trust Co. v. Signature Financial Group, Inc. (1998) reversed those positions.

Shortly after each of the decisions, inventors inundated the Patent Office with related patent applications. The Patent Office responded by consulting with industry and patent practitioners. When it realized that its existing groups of patent examiners (called Technology Centers) could not adequately examine applications in those emerging fields, the Patent Office created an additional Technology Center for each and gave the examiners in these Technology Centers extensive written guidelines tailored to examining applications in the associated field.

In contrast, the Patent Office does not dispute that nanotechnology inventions meeting the statutory requirements are patentable. And although it is consulting with the nanotechnology industry and patent practitioners, it has been slow to develop written examination guidelines and has not created a Technology Center for nanotechnology applications, even though nanotechnology inventions pose some vexing problems.

Trouble Spots

Foremost among these problems is that most patent examiners do not possess the advanced technical education or experience necessary to properly examine applications in the nanotechnology field. And the cross-disciplinary nature of nanotechnology may thwart the best efforts of even those individual examiners with advanced degrees or experience or both. In addition, even though examiners from one Technology Center are allowed to discuss applications with examiners from other Technology Centers, the Patent Office does not provide incentives to promote this type of cross-disciplinary examination.

The daunting task of identifying, collecting, and classifying nanotechnology prior art presents another problem. These critical prior-art resources allow examiners to evaluate whether an application claims a patentable invention. Equally vital are the tools with which an examiner conducts searches of the prior art. And although the Patent Office has identified three specific Technology Centers with a significant number of nanotechnology patent applications, further complications arise from the Patent Office’s inability to quickly and accurately identify which patents and patent applications reflect nanotechnology inventions. Finally, the cross-disciplinary nature of nanotechnology may make the development of a single, all-encompassing set of written examination guidelines for nanotechnology inventions extremely difficult.

In trying to come to grips with nanotechnology, the Patent Office is providing its examiners with a significant amount of nanotechnology-related training. Interestingly, much of this training is being conducted collaboratively with technologists from the nanotechnology industry and patent practitioners. For example, the Patent Office’s first two Nanotechnology Customer Partnership Meetings, the second of which was held April 20, included frank discussions about the current and projected status of a wide variety of topics, such as applying the statutory requirements for patentability to nanotechnology inventions; identifying, classifying, and searching nanotechnology prior art; developing a central collection of nanotechnology prior art; and harmonizing nanotechnology standards internationally. These collaborations present a unique opportunity to help shape the future of patent law and practice in the nanotechnology field.

Conclusion

In the short term, we expect the Patent Office to focus its efforts on the three Technology Centers—where the action is—by continuing to emphasize training for those examiners, hiring additional examiners with advanced degrees in nanotechnology-related fields, improving resources and tools for prior-art searches, and by developing effective written examination guidelines.

In the long term, we expect the Patent Office to broaden its efforts by creating a Technology Center for nanotechnology that includes active promotion of cross-disciplinary examination and by continuing to push for international harmonization of nanotechnology standards, particularly among the trilateral offices—the U.S. Patent and Trademark Office, the European Patent Office, and the Japanese Patent Office. This push for harmonization will likely include an agreement on improving the rules and structure of the International Patent Classification System ("IPC") and incorporation of nanotechnology classifications into the IPC, as well as completion of a centralized collection of nanotechnology prior art, currently known as the Nanotechnology Cross-Reference Art Collection.

The revolutionary nature of nanotechnology and the evolutionary changes in patent practice in this area offer unprecedented opportunities for patent-savvy companies and individuals to identify additional uses, create innovative products, develop potential markets, and help shape the future of patent law and practice in the nanotechnology field.

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