WASHINGTON, Feb. 4, 2002 — U.S. patent examiners must become better educated about nanotechnology if the burgeoning industry is going to fully thrive, experts say.
They also say that the United States Patent and Trademark Office (USPTO) needs to find a bureaucratic home for nanotechnology developments.
As nanotechnology patents flow into the system, representatives of the industry are working with the USPTO to let agency examiners know that nanotechnology is a unique, interdisciplinary science that deserves special attention.
“Our big issues are making sure that the USPTO understands nanotechnology, so when people come with their patents, examiners understand what are reasonable boundaries,” said Mark Modzelewski, founder and president of the NanoBusiness Alliance, the nanotechnology industry’s trade association.
“We would not like to see, within nanotechnology patents, some of the things we’ve seen in recent technology waves, where there have been concept patents awarded, which allow people to lock up huge areas. That’s a real fear for us in nanotechnology.”
The explosion of information technology innovations and the flood of IT patent applications that followed, especially in software and so-called “business method patents” fields, caught the USPTO by surprise. The USPTO has acknowledged that its staffing levels were insufficient for handling the IT ferment and the agency has recently beefed-up its IT staff.
The agency notoriously granted patents to Amazon.com for “one-click” online shopping. Priceline.com was granted a patent for its style of online bidding. Both patents were denounced by critics as too broad and stifling to industry.
Modzelewski said it’s a “fair statement” that some nanotechnology patents being granted now are “rather broad,” and he said that worries him.
He also said the USPTO does not employ anybody especially knowledgeable about nanotechnology, although the USPTO has reached out to the industry to educate examiners about the science.
The Foresight Institute, a nanotechnology think tank, held a roundtable discussion on the topic in November, and USPTO executives were in attendance.
Brigid Quinn, a USPTO spokeswoman, said that the agency has seven different technology centers, from biotechnology to chemical and materials engineering — but not nanotechnology.
Leon Radomsky, a registered patent attorney with the Washington, D.C., office of the law firm Foley & Lardner, helped organize the roundtable.
“We’re having a lot of trouble prosecuting nanotechnology patents,” he said. “I thought this kind of meeting would really help by getting this nascent industry off on the right foot” with the USPTO.
Radomsky, who worked as a patent examiner for semiconductors between 1994 and 1998, said that there is no group within USPTO focused on nanotechnology. Within the USPTO, there are hundreds of “art units,” which are niches of research within wider scientific fields, such as computer-based simulation and emulation within the wider communications and information processing technology center. None of them are dedicated to nanotechnology, he said.
“So things with a biocomponent go to the bio center, ones more semiconductor or device oriented go to the semiconductor center, nanomaterials or particles go to the inorganic center,” he said. “They are examined all over the place by different examiners.
“What happens is, because these (nanotechnology) patents are interdisciplinary, some of these applications go to a biotechnology examiner and others go to a semiconductor examiner, and (the examiners) would not necessarily do a search in other areas.”
The process, he said, is a recipe for inferior patents that could plague the nanotechnology industry.
With examiners ignorant of the scope of nanotechnology, companies would be faced with patents that are either rejected improperly because the examiner mistakenly concluded that the application is not new, or overly broad patents that would give a single company far too much control over a particular swath of a technological field.
In both cases, the costs to industry, in legal fees alone, are high. If a patent application is improperly denied, the company must petition the USPTO to reconsider the application. The petitioning can go on through several stages and there is no guarantee the agency will eventually relent and grant the patent.
It’s even costlier for a company to challenge a patent that was improperly granted to another company.
Outside of the legal fees there is time. The longer patents sit in bureaucratic limbo at the USPTO, the less time companies have to forge ahead and take commercial advantage of their innovations.
By way of example for the nanotechnology industry, Radomsky said that a patent granted for a set of particles having an average of 100 nanometers or less would be an overbroad claim.
Beyond the issue of nanotechnology savvy by examiners, Radomsky said, it’s important that the USPTO somehow insinuate nanotechnology into the bones of the agency in some formal manner.
Now, nanotechnology patents are scattered from technology center to technology center. As a result, patents live in isolation within different art units. The agency doesn’t necessarily need to launch a nanotechnology center, he said, but it should put in place a system that funnels nanotechnology patents to specific people tutored in nanotechnology within the different technology centers. The nanotechnology specialists can communicate with one another, which would help ensure that only the right patents are granted for the right reason..
Nanotechnology presents a unique challenge to the USPTO, he said. The field is so interdisciplinary that it has homes just about everywhere else in science.
“If they have only a few places where these things go, that makes it easy to search (for evidence of prior innovations in the field) and easy to train the examiners,” he said. “The quality of the patents will improve and everybody will be better off.”
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