WASHINGTON, April 20, 2004 — As the U.S. Patent and Trademark Office (USPTO) prepares to hold a second nanotechnology outreach meeting today, the agency is still struggling to get ahead of this new and dynamic industry.
The agency has come under some scrutiny in the past few years for how it has handled nanotech patent applications. Some observers say, despite its efforts to educate its examiners about nanotechnology, the agency still faces structural impediments that make it difficult to adequately examine patents being filed by nanotechnology researchers and companies.
“The thing with the patent office is it’s a big government bureaucracy. For them to start making a change takes a long time,” said Leon Radomsky, a former patent examiner who is now a patent lawyer with the Washington office of Foley & Lardner LLP, a law firm that takes on nanotech IP cases. “When they take a step, things tend to get better. The reason it will get better is they realize this is an issue.”
Tuesday’s meeting allowed nanotech applicants and others to share ideas and concerns with the agency. It also serves as technical training for examiners, said Bruce Kisliuk, a PTO patent examiner group director who focuses on nanotech.
Kisliuk said the PTO sends about 50 examiners a month to technical training events on nanotech. “The PTO is good at accepting training,” said Charles “Chad” Wieland, who heads the nanotechnology practice for the Alexandria, Va., office of the Burns Doane Swecker & Mathis LLP law firm.
Wieland launched a monthly forum held near the PTO’s headquarters in northern Virginia aimed at helping to educate PTO examiners on various nanotech topics.
Yet despite its best efforts, the PTO faces some structural problems that make it hard for the agency to deal with the broad range of scientific areas encompassed by many nanotech patent applications.
Among the problems Radomsky and others point to is the way patents are examined. Once an application is submitted, it is assigned to a patent examiner in a certain group area who works alone in evaluating the application. But many nanotech patents require expertise in a number of different areas.
“Nanotech is interdisciplinary by nature,” Wieland said. As an example, he pointed to an application for a nanoelectronic device that might include an organic element in it. Under the current system, the application would go to an examiner who specializes in electronic devices is likely to have no expertise dealing with organic elements.
“You do have a significant issue of getting it to the right examiner,” said Wieland, who, like Radomsky, is a former patent examiner.
Wieland said he would like to see the patent office use several examiners with different areas of expertise work on nanotech patents. In fact, he said, many applicants would probably pay extra for such attention.
Kisliuk said that while the agency does not currently provide for team examinations, examiners consult when needed with other examiners who are experts in other fields.
But Kisliuk argued that given the nature of nanotechnology, “to form a group for nanotech, it would encompass the whole patent office.” He added, however, that if there becomes “enough of a critical mass, we’ll start an art area” for nanotechnology.
In addition, because the patent office lacks a classification system to identify nanotechnology applications, Kisliuk could not say how many nanotechnology patent applications have been filed or granted.
The PTO is in the process of developing such a classification system, which Kisliuk said he hopes will be completed by the end of the year. Such a system will allow examiners to search prior art, the body of knowledge on a particular invention, and better determine what patents have been granted in a certain area in the past. Under the current system, examiners must rely on keyword searches to find information related to the patent application they are examining, Kisliuk said.
Kisliuk acknowledged the challenges the PTO faces and said the agency will most likely grant some patents that are viewed as too broad. But he added that he believes the agency “is in a good position of being aware of what’s going on.”