Dec. 2, 2004 – The U.S. Patent and Trademark Office’s new index and cross-reference for nanotechnology are likely to impact every nano-based business or inventor who has sought or is seeking legal protection of intellectual property, according to IP lawyers. Initiated in mid-October, the digest will make it easier to search for “prior art,” collect issued U.S. patents and publish patent applications relating to nanotechnology.
Experts say the action will lead to stronger, more defensible patents and encourage innovation by increasing confidence in the patent system. They added that the action was necessary because of the difficulty in classifying nanotechnology inventions.
“Nanotechnology is a big umbrella,” said Andrew Basile, a partner at Cooley Godward LLP in Palo Alto, Calif., because it can apply to everything from matter to a final product.
“Historically, if you wanted to research nanotechnology patents you really had your work cut out for you because of the overuse of the word nanotechnology or under use describing the prior art. You don’t have to use the term nanotechnology; you could say molecular structure or granular crystals,” said Basile.
Instead of nanotech inventions being scattered among dozens of current technology indexes, the patent office will have nanotech-trained examiners looking for nano inventions in other indexes as a cross-reference and will group nanotechnology in a category of its own. Right now, examiners are going through indexes to search for prior art in assembling the nano-index.
“In the course of examining a reference, there is a procedure for examiners to look for an earlier one, so what’s in the nanotech classification now is the prior art. Our first cut at establishing this digest is based on going backwards,” said Bruce Kisliuk, a group director in technology for the USPTO.
Establishing a list of prior art is crucial, say intellectual property practitioners, because otherwise patents can be awarded in one field even though a similar invention might be classified in another index.
“Say I invent a coffee cup,” Basile said. “I coated the outside with an insulating layer so it doesn’t burn the hands; you might have a classification of cups, but is my invention really coating? The same disclosure can touch multiple categories and it’s often non-intuitive as to which categories an invention might be in.”
The change also will help avoid conflicts that arise when two people apply for the same invention at the same time, said John Gartman, managing partner of Fish & Richardson P.C.’s San Diego office. “Now people will be able to spot the same invention in an index and declare `interference,’ to determine who invented it first.”
Kisliuk predicted the digest will save time and labor, too. “Whenever you improve the ability to search, it makes the patent examination process better, and that improves the whole system because it allows practitioners to look at the subject matter before they file their patent application,” he said.
IP practitioners point to a number of practical changes the new classification may have on inventors receiving, or being denied, patents. Attorneys can play either offense or defense in the patent process, either acting as an advocate for a client who wants a patent or for a client who wants to block someone else receiving a patent.
Since a growth company’s most valuable asset is often its intellectual property, the issuance and denial of patents becomes a form of business competition in which parties either enter or hope to deny entry to the business arena.
“I’m not sure the new classification will make gaining a patent easier or tougher,” said David Schnapf a San Francisco-based IP partner for Sheppard, Mullin, Richter and Hampton LLP. “But it’s more probable that applications will be blocked because examiners will be using the prior art.”
Gartman said the USPTO classification will lead to more qualified examiners, increase the public’s confidence in the system, and encourage patent filings, because of a perception that the patent office “is hot on this area.” But because the office has to staff up the index, Gartman said there could be a backlog of applications while it catches up.
Ronald Yin, a veteran IP practitioner for GrayCary in East Palo Alto, said patents issued under the new system will be stronger, or more defensible against attack, because the system for producing them will be improved.
When new technologies are developed, Yin said examiners typically ask themselves what’s the closest currently indexed technology they can group with the new one. “When laser light came on as a new technology, the closest thing they found was light bulbs,” he added.
Now that nanotechnology has its own classification, “patents issued will be stronger because you weed out the ones that shouldn’t have been there in the first place.”
The classification is a benefit to nanotechnology, Yin said, because it shows society is recognizing a “whole new field of invention,” not just an extension of some other field.