Nanotechnology-Related Issues at the United States Patent and Trademark Office

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1 Nanotechnology-Related Issues at the United States Patent and Trademark Office Charles R. Eloshway Patent Attorney, Office of International Relations USPTO

2 USPTO Nanotech Topics Nanotech Patents - How to define and how many Classifying Nanotechnology Patents and Nanotech-related Patent Statistics USPTO Nanotechnology Initiatives Patentability Issues in Examining Nanotech-Related Patent Applications 2

Nanotech-related Patent Statistics USPTO Nanotechnology

3 Nanotechnology Patents how to define them What defines a Nanotechnology Patent - USPTO classification is consistent with the National Nanotechnology Initiative (NNI) definition. Nanotechnology is the understanding and control of matter at dimensions of roughly 1 to 100 nanometers (a nanometer is one-billionth of a meter), where unique phenomena enable novel applications... At this level, the physical, chemical, and biological properties of materials differ in fundamental and valuable ways from the properties of individual atoms and molecules or bulk matter. 3

Nanotechnology is the understanding and control of matter at dimensions of roughly 1 to 100 nanometers (a nanometer is one-billionth of a

4 Nanotechnology Patents how to define them Currently a limited number of patents that actually claim a nanotechnology invention by this definition. Many more patents that include nanotechrelated terms in the disclosure. 4

nanotechnology invention by this definition.

5 Classification Progress Class 977 Digest I (established Oct. 2004) has now expanded from a single digest to a cross-reference art collection of 263 new subclasses Posted and searchable in mid-february 2006 As of December 2006, over 4,500 patents and over 1,200 Pre-Grant Publications placed. Public Availability The public may view the expanded Nanotechnology Class 977 subclass schedule and definitions (PDF format) using the following web link: 5

in mid-february 2006 As of December 2006, over 4,500 patents and over 1,200 Pre-Grant Publications placed.

6 Classification Progress The creation of cross-reference Class 977 Nanotechnology and its expanded 263 subclasses provides the USPTO with: 1) A consolidated area of search to supplement the patent application examination process as an enhanced search tool. 2) A mechanism by which Nanotechnology-related US Patent activity can be analyzed by the USPTO and the public. 3) A foundation for further nanotechnology classification progress. 6

examination process as an enhanced search tool.

7 Current Class 977 Patents Technology Center Biotechnology and Organic Chemistry Chemical and Materials Engineering Computer Architecture Software and Info. Security Communications Semiconductor, Electrical, Optical Systems Transportation, Construction, Electronic Commerce Mechanical Eng., Manufacturing and Products Total Number of Patents (As of Dec. 2006) 7

Security 2600 - Communications 2800 - Semiconductor, Electrical, Optical Systems 3600 - Transportation,

8 Nanotech Patents and Pre-grant Publications Distribution Across Technologies Biotech/Pharm. 19% Electrical 48% Chem/Materials 24% Mechanical 9% 8

9 Distribution By Type of Invention MANUFACTURE, TREATMENT, OR DETECTION OF NANOSTRUCTURE 39% SPECIFIED USE OF NANOSTRUCTURE 30% MATHEMATICAL ALGORITHMS, E.G., SPECIFICALLY ADAPTED FOR MODELING CONFIGURATIONS OR PROPERTIES OF NANOSTRUCTURE <1% MISCELLANEOUS <1% NANOSTRUCTURE 31% 9

10 SWEDEN 60% 50% 40% 30% 20% 10% 0% Class 977 Patent Statistics (thru August 2006) Top Ten Foreign Countries -Class 977 Patents 10 ISRAEL FRANCE SOUTH KOREA CANADA SWITZERLAND UNITED KINGDOM TAIWAN GERMANY JAPAN Percent of Total Foreign Origin Cl. 977 Patents

10 ISRAEL FRANCE SOUTH KOREA CANADA SWITZERLAND UNITED KINGDOM

11 U.S. Patent Data vs. Global Patenting Publication Data A search of just U.S. Patent data does not reflect global patenting activity. U.S. Patent data identifies those seeking patent protection in the U.S. only. Certain challenges in making comparisons using global patent data due to differences in patent practices. For example, differences in when patent publications occur relative to filings, and the time from application filing to grant. Differences in patentability standards. Accounting for filings of the same invention in multiple countries. 11

For example, differences in when patent publications occur relative to filings, and the time from application filing to grant.

12 First-Occurring Nanotech-Related Patent Publications (by Residence-Country of First-named Inventor, , using Derwent WPI) 20% 18.7% 18% 16% 14% 12.9% Percent of Total 12% 10% 8% 9.8% 6% 5.5% 4% 3.4% 2% 0% UNITED STATES CHINA JAPAN GERMANY KOREA 12

13 Nanotech-Related Patent Patent Publications on Same Invention in 3 or More Countries (by Residence-Country of First-named Inventor, , using Derwent WPI) 35% 31.7% 30% 26.9% 25% Percent of Total 20% 15% 10% 11.3% 6.6% 5% 3.6% 2.5% 2.5% 0% UNITED STATES JAPAN GERMANY KOREA FRANCE UNITED KINGDOM SWITZERLAND 13

Derwent WPI) 35% 31.7% 30% 26.9% 25% Percent of Total 20% 15% 10% 11.3% 6.

14 Nanotechnology Patent Statistics: Summary U.S.- origin inventors and assignees/owners have: the most nanotechnology-related U.S. Patents by a substantial margin, the most nanotechnology-related patent publications globally, but by a narrower margin (followed closely by Japan), and the most nanotechnology-related inventions with patent publications in 3 or more countries, indicating a more aggressive pursuit of international IP protection. The next most active countries pursuing nanotechnology-related patents globally include Japan, Germany, Korea, and France. 14

15 USPTO Nanotechnology Initiatives Customer Partnership Annual Meetings Nanotech Training and Seminars for Examiners Classification Project Prior Art Search Resources In-house website Subset of examiners serving as nanotech pointsof-contact to assist other examiners 15

Classification Project Prior Art Search Resources In-house website

16 Patentability Issues in Examining Nanotech 35 USC 102 Inherency 35 USC 103 Obvious to make smaller (?) 35 USC 112, 1st Paragraph, Enablement Case Law Related to Changes in Size 16

17 35 USC 102 Inherency In re Best, 195 USPQ 430, 433 (CCPA 1977; M.P.E.P ) The claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. Ex Parte Levy, 17 USPQ2d 1461, 1464 (BPAI, 1990; M.P.E.P ) 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 teachings of the applied prior art. Schering Corp. v. Geneva Pharm., 68 USPQ 1760, 1763 (Fed. Cir. 2003; M.P.E.P ) Simply put, the fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention. 17

Ex Parte Levy, 17 USPQ2d 1461, 1464 (BPAI, 1990; M.P.E.P. 2111.

18 35 USC 103 Obviousness Aren t inventors always motivated to make things smaller, fast, more sensitive? Maybe, but Obviousness Requires A Reasonable Expectation Of Success The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. - In re Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986) 18

Maybe, but Obviousness Requires A Reasonable Expectation Of Success The prior art can be

19 35 USC 112, 1st Paragraph: Enablement Scope of Enablement: Full scope of claims Enablement for specific claimed use When is a claim not enabled? Undue Experimentation Wands Factors 19

20 Case Law Related to Changes in Size/Proportion Application of Troiel, 274 F.2d 944 (CCPA 1960) It is well established that the mere change of the relative size of the co-acting members of a known combination will not endow an otherwise unpatentable combination with patentability. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) Mere scaling up would not establish patentability in a claim to an old process so scaled. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984) where the only difference between the prior art and the claims was a recitation of relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Texas Instruments v. ITC, 805 F.2d 1558 (Fed. Cir. 1986) a mere change in size due to improved miniaturization by technological advance does not in itself save the accused devices from infringement 20

patentability. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) Mere scaling up would not establish patentability in a claim to an old process so scaled. In Gardner v. TEC Systems, Inc., 725 F.

21 Resource Site: Contact Info: Bruce Kisliuk Patent Examining Group Director Technology Center 1600, USPTO Biotechnology, Pharmaceuticals, Organic Chemistry

UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES

UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte TATSUO NAKAJIMA, ARITO MATSUI, TAKASHI NISHIMOTO, GO ITOHYA, HAJIME ASAI, and TSUNEO TAKANO Appeal