Nanotechnology Patents: Will Small-Scale Science Pose Big Challenges for Applicants and the Patent Office?

The term “nanotechnology” generally refers to the fabrication and manipulation of materials and devices on the scale of about 1-100 nanometers, and has become one of the key technology buzzwords for 2004. The passage of the 21st Century Nanotechnology Research and Development Act, Pub. L. No. 108-153, which authorized $3.7 billion in federal funding from 2005 through 2008 for the support of nanotechnology research and development, has fueled the fervor over nanotechnology. This substantial funding came as the scientific community and industries as diverse as cosmetics, pharmaceuticals, and petrochemicals were increasingly discovering that, when reduced to nanoscale size, ordinary bits of matter often manifest radically different physical properties. See Joseph Brean, The Next Big (Little) Thing, National Post (Feb. 6, 2004).

The excitement has spread from academia and R&D labs to Wall Street, where investors are jumping at the chance to get in on the action from the outset. In fact, investors have proven so fascinated with nanotechnology that in December 2003 a company called Nanometrics saw its stock price increase by 10% in one day of heavy trading, even though Nanometrics announced no news that day and, as it turns out, does not practice nanotechnology in any commonplace sense of the term. Rather, Nanometrics makes tools that measure thin films used in semiconductors, flat-panel displays, and disk drives. So why the jump in stock price? Simply, it appears, because Nanometrics happens to trade under the ticket symbol NANO. Rachel Beck, Investors Pour Big Money Into Latest Rage, Nanotech, The Grand Rapids Press, 2004 WL 58533128 (Jan. 11, 2004).

While scientists toil to conquer the mechanics of nanotechnology and Wall Street strives to cash in on it, the intellectual property bar and the U.S. Patent and Trademark Office (“USPTO”) have begun to prepare for an onslaught of new patent applications and potential new patent prosecution pitfalls. As the fundamental science of nanotechnology (which embraces combined elements of, at least, such well-developed arts as chemistry, physics, electronics, material science, and mechanical engineering) seems likely to be readily integrable into the scope of traditional patent protection, nanotechnology-related patent applications are not expected to encounter the wholesale confusion associated with the early prosecution practice of claims for business methods and certain biotechnology applications, both of which were initially held by the USPTO to be non-patentable subject matter. Still, there may be problems unique to the prosecution of nanotechnology-related patent claims. One oft-voiced concern of the intellectual property bar is that, in the absence of a specialized nanotechnology examining group, early-filed nanotechnology patents may issue with claims of unusually broad scope.

Such fears may rest on the theory that Examiners in discrete technology areas (say, electronics) may lack the necessary trans-disciplinary knowledge and experience in other fields (such as materials science or chemistry) implicated by the often-complex combination of sophisticated synthesis and materials processing techniques necessary to obtain and manipulate nano-scale devices having electrically and otherwise-useful properties, and that such Examiners may thus allow claims broader than are justified by the prior art as a whole or by the enabling disclosure of the applicant.

In an effort to address this and other concerns, the USPTO has developed a Nanotechnology Customer Partnership initiative that is intended to act as an open forum to share ideas, experiences, and insights between individual users and the USPTO. The first meeting of the Nanotechnology Customer Partnership occurred on Sept. 11, 2003.

At that meeting, the USPTO presented, among other things, insight into the likely specific problems that applicants filing nanotechnology patents may have to face, as well as to standards relating to anticipation and obviousness. Initially, the USPTO addressed the well-established legal doctrine that limitations relating to the size of a claimed object are not sufficient to distinguish patentably over the prior art and that the mere scaling up or down of a prior art process would not by itself establish a patentable claim over the prior art. In re Rose, 220 F.2d 459 (C.C.P.A. 1955); In re Rinehart, 531 F.2d 1048 (C.C.P.A. 1976).

More recently, the Federal Circuit held that when the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1345-46 (Fed. Cir. 1984).

Assuming that an application is able to clear that initial hurdle of novelty, the remaining specific issues that the USPTO emphasized in its initial Partnership meeting involved the proper standards for, and the burdens on applicants and examiners relating to, an inherency rejection ' a type of rejection which the USPTO may be re-emphasizing out of a belief that the potential for miniaturization, or for manipulating known structures and processing techniques, but on a smaller scale, will sometimes prove to have been inherent in known, non-nanoscale, analogous technology.

As in all applications, the doctrine of inherency in nanotechnology cases will be analyzed as a question of fact, and may be used in connection with a rejection under 35 U.S.C. '102 or 35 U.S.C. '103 when the prior art seems to be identical except that the prior art is silent as to an inherent characteristic of the claimed subject matter. In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995). The USPTO has long acknowledged that the initial burden in establishing an inherency rejection rests with the Examiner, noting that “in relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teaching of the applied art.” Ex parte Levy, 17 U.S.P.Q.2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). To establish inherency, the evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. In re Oelrich, 666 F.2d 578, 581-82 (C.C.P.A. 1981). Once an Examiner proffers evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. “The PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” In re Fitzgerald, 619 F.2d 67, 70 (C.C.P.A. 1980).

Thus, it seems clear that the USPTO initially foresees two primary forms of rejection being most relevant to nanotechnology applications: 1) lack of novelty when the crux of the claimed invention constitutes a mere change of scale, and 2) lack of novelty because the claimed invention was inherently embodied in or shown by the prior art. Nanotechnology patent applicants and their counsel will need to draft applications that make clear that the invention constitutes more than a mere miniaturization, or exploitation of inherent characteristics of known materials and methods, but rather presents a device or formulation of matter that performs differently, or yields a different useful result, from its larger-scaled counterpart. Moreover, applicants and drafters will need to be prepared to respond to a variety of potential inherency rejections based on what potential alterations in scale one skilled in the art would likely have recognized when considering the larger-scaled counterpart.

The likely deluge of nanotechnology-related patent applications that will occur in coming years, as companies and institutions seek to cash in on the bonanza of profits anticipated to accrue from the ability to create devices and other nano-engineered materials far smaller than anything visible to the human eye, does not then, necessarily require the evolution of new principles of patent law. Rather ' similar to nanotechnology engineers combining knowledge from a broad range of materials science and electromechanical disciplines ' patent applicants and patent lawyers will need to focus on the fine details of existing bodies of knowledge in creating, describing, and protecting the subject matter of nano-engineering advances.

The term “nanotechnology” generally refers to the fabrication and manipulation of materials and devices on the scale of about 1-100 nanometers, and has become one of the key technology buzzwords for 2004. The passage of the 21st Century Nanotechnology Research and Development Act, Pub. L. No. 108-153, which authorized $3.7 billion in federal funding from 2005 through 2008 for the support of nanotechnology research and development, has fueled the fervor over nanotechnology. This substantial funding came as the scientific community and industries as diverse as cosmetics, pharmaceuticals, and petrochemicals were increasingly discovering that, when reduced to nanoscale size, ordinary bits of matter often manifest radically different physical properties. See Joseph Brean, The Next Big (Little) Thing, National Post (Feb. 6, 2004).

The excitement has spread from academia and R&D labs to Wall Street, where investors are jumping at the chance to get in on the action from the outset. In fact, investors have proven so fascinated with nanotechnology that in December 2003 a company called Nanometrics saw its stock price increase by 10% in one day of heavy trading, even though Nanometrics announced no news that day and, as it turns out, does not practice nanotechnology in any commonplace sense of the term. Rather, Nanometrics makes tools that measure thin films used in semiconductors, flat-panel displays, and disk drives. So why the jump in stock price? Simply, it appears, because Nanometrics happens to trade under the ticket symbol NANO. Rachel Beck, Investors Pour Big Money Into Latest Rage, Nanotech, The Grand Rapids Press, 2004 WL 58533128 (Jan. 11, 2004).

While scientists toil to conquer the mechanics of nanotechnology and Wall Street strives to cash in on it, the intellectual property bar and the U.S. Patent and Trademark Office (“USPTO”) have begun to prepare for an onslaught of new patent applications and potential new patent prosecution pitfalls. As the fundamental science of nanotechnology (which embraces combined elements of, at least, such well-developed arts as chemistry, physics, electronics, material science, and mechanical engineering) seems likely to be readily integrable into the scope of traditional patent protection, nanotechnology-related patent applications are not expected to encounter the wholesale confusion associated with the early prosecution practice of claims for business methods and certain biotechnology applications, both of which were initially held by the USPTO to be non-patentable subject matter. Still, there may be problems unique to the prosecution of nanotechnology-related patent claims. One oft-voiced concern of the intellectual property bar is that, in the absence of a specialized nanotechnology examining group, early-filed nanotechnology patents may issue with claims of unusually broad scope.

Such fears may rest on the theory that Examiners in discrete technology areas (say, electronics) may lack the necessary trans-disciplinary knowledge and experience in other fields (such as materials science or chemistry) implicated by the often-complex combination of sophisticated synthesis and materials processing techniques necessary to obtain and manipulate nano-scale devices having electrically and otherwise-useful properties, and that such Examiners may thus allow claims broader than are justified by the prior art as a whole or by the enabling disclosure of the applicant.

In an effort to address this and other concerns, the USPTO has developed a Nanotechnology Customer Partnership initiative that is intended to act as an open forum to share ideas, experiences, and insights between individual users and the USPTO. The first meeting of the Nanotechnology Customer Partnership occurred on Sept. 11, 2003.

At that meeting, the USPTO presented, among other things, insight into the likely specific problems that applicants filing nanotechnology patents may have to face, as well as to standards relating to anticipation and obviousness. Initially, the USPTO addressed the well-established legal doctrine that limitations relating to the size of a claimed object are not sufficient to distinguish patentably over the prior art and that the mere scaling up or down of a prior art process would not by itself establish a patentable claim over the prior art. In re Rose, 220 F.2d 459 (C.C.P.A. 1955); In re Rinehart, 531 F.2d 1048 (C.C.P.A. 1976).

More recently, the Federal Circuit held that when the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1345-46 (Fed. Cir. 1984).

Assuming that an application is able to clear that initial hurdle of novelty, the remaining specific issues that the USPTO emphasized in its initial Partnership meeting involved the proper standards for, and the burdens on applicants and examiners relating to, an inherency rejection ' a type of rejection which the USPTO may be re-emphasizing out of a belief that the potential for miniaturization, or for manipulating known structures and processing techniques, but on a smaller scale, will sometimes prove to have been inherent in known, non-nanoscale, analogous technology.

As in all applications, the doctrine of inherency in nanotechnology cases will be analyzed as a question of fact, and may be used in connection with a rejection under 35 U.S.C. '102 or 35 U.S.C. '103 when the prior art seems to be identical except that the prior art is silent as to an inherent characteristic of the claimed subject matter. In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995). The USPTO has long acknowledged that the initial burden in establishing an inherency rejection rests with the Examiner, noting that “in relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teaching of the applied art.” Ex parte Levy, 17 U.S.P.Q.2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). To establish inherency, the evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. In re Oelrich, 666 F.2d 578, 581-82 (C.C.P.A. 1981). Once an Examiner proffers evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. “The PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” In re Fitzgerald, 619 F.2d 67, 70 (C.C.P.A. 1980).

Thus, it seems clear that the USPTO initially foresees two primary forms of rejection being most relevant to nanotechnology applications: 1) lack of novelty when the crux of the claimed invention constitutes a mere change of scale, and 2) lack of novelty because the claimed invention was inherently embodied in or shown by the prior art. Nanotechnology patent applicants and their counsel will need to draft applications that make clear that the invention constitutes more than a mere miniaturization, or exploitation of inherent characteristics of known materials and methods, but rather presents a device or formulation of matter that performs differently, or yields a different useful result, from its larger-scaled counterpart. Moreover, applicants and drafters will need to be prepared to respond to a variety of potential inherency rejections based on what potential alterations in scale one skilled in the art would likely have recognized when considering the larger-scaled counterpart.

The likely deluge of nanotechnology-related patent applications that will occur in coming years, as companies and institutions seek to cash in on the bonanza of profits anticipated to accrue from the ability to create devices and other nano-engineered materials far smaller than anything visible to the human eye, does not then, necessarily require the evolution of new principles of patent law. Rather ' similar to nanotechnology engineers combining knowledge from a broad range of materials science and electromechanical disciplines ' patent applicants and patent lawyers will need to focus on the fine details of existing bodies of knowledge in creating, describing, and protecting the subject matter of nano-engineering advances.