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The Importance of Defining Novel Terms in Patenting Nanotechnology Inventions
Descriptive terminology is essential to providing effective patent protection for nanotechnology inventions, particularly from the perspective of future licensing and litigation activities. One of the key difficulties in patenting nanotech inventions, however, arises from the absence of established terminology. Failure to clearly define one's invention can lead to a number of unfortunate consequences, ranging from an overly narrow patent covering a limited scope of subject matter to a vague or overly broad patent susceptible to invalidation. This article will discuss: 1) recent decisions from the Federal Circuit that reveal how the use of descriptive terminology is essential to patenting nanotech inventions effectively, 2) how those decisions pose special problems for nanotech inventions, and 3) how those problems can be addressed through nanotech inventors acting as their own lexicographers and defining key terms in their patent specifications.
A number of recent decisions by the Federal Circuit have addressed the way in which courts should interpret the language of patent claims in determining their scope. Those decisions have emphasized that the language of the claims themselves should be the centerpiece of any analysis in determining the legal boundaries of the patented invention. Foremost among those decisions is Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (2002), in which the Federal Circuit stated that claim terms “bear a 'heavy presumption' that they mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art.” Id. at 1202.
Significantly, the court indicated that the “ordinary meaning” of claim terms should be ascertained by using dictionaries, encyclopedias, and treatises as the principal guides:
Dictionaries, encyclopedias, and treatises, publicly available at the time the patent is issued, are objective resources that serve as reliable sources of information on the established meanings that would have been attributed to the terms of the claims by those of skill in the art. … [T]hese materials may be the most meaningful sources of information to aid judges in better understanding both the technology and the terminology used by those skilled in the art to describe the technology. Id. at 1202-03 (emphasis added).
While maintaining its view that dictionaries and other references are key sources of information in determining the ordinary meaning of claim terms, the Federal Circuit has emphasized in both Texas Digital and subsequent decisions that “the intrinsic record [the claims, specification, and prosecution history] must always be consulted to identify which of the different possible dictionary meanings is most consistent with the use of the words by the inventor.” Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed. Cir. 2003) (emphasis added); see also Housey Pharm., Inc. v. AstraZeneca UK Ltd., 366 F.3d 1348, 1352 (Fed. Cir. 2004).
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