Nanotechnology has been the new “it” technology in intellectual property circles for years: the volume of “nanotechnology” patent applications continues to grow, the “nano” prefix has been attached to everything from pants to household cleaners to ski equipment, and cross-licensing arrangements in this area are becoming commonplace. The nanotech boom has been accompanied by an uptick in regulatory attention, which is expected to continue to lead to new programs at all levels of administration and to affect the value of various nanotechnologies as risks are identified and managed through regulations. Despite the explosive growth in nanotechnology and the promise of significant future developments to come, a prime concern during the infancy of any new technology must be securing appropriate intellectual property protection for key developments. It does not take a crystal ball to recognize that strong intellectual property rights will be the building blocks of the nanotech business ventures of the future, but figuring out the best way to approach these problems requires creativity and innovation.

Intellectual property rights relating to nanotechnology are far from concrete, as some of the traditional methods of protecting intellectual property continue to lag behind the pace of technological development. Vast stretches of the nanotechnology frontier have yet to be explored, let alone settled; however, that has not stopped some entities from attempting to claim as much of that space as possible, leading to confusing, if not conflicting, intellectual property claims. As more entities join in the race to secure intellectual property protections, the conflicts are magnified. Obtaining the advice and counsel of skilled intellectual property professionals familiar with the issues surrounding nanotech intellectual property is one way to alleviate some of the uncertainty in this brave new world.

Companies entering the nanotech fray must take affirmative steps not only to defend their intellectual property claims, but also to maximize their value. Both of these goals can be accomplished through the development of a strong intellectual property portfolio that is protected through a variety of mechanisms that will weather future challenges. In the nanotech realm, companies cannot afford to postpone consideration of intellectual property protections; doing so risks the future viability of a company’s nanotech endeavors and, perhaps, the future of the company itself.

This discussion of intellectual property rights and nanotechnology looks at a host of intellectual property-related issues in the abstract—that is, not considering the various processes, products, brands, and other intellectual property matters that are part of a company’s interrelated portfolio. In order for any company to maximize the value and protection surrounding its nanotechnology intellectual property, these components must be viewed together and a strategy developed that involves consideration of all aspects of the company’s unique portfolio. This article highlights some of the considerations that should be part of the discussions with intellectual property counsel in crafting an individualized nanotechnology intellectual property strategy. These discussions, however, cannot serve as a substitute for engaging in individualized analysis and planning.

Why Is Nanotechnology Different?

Nanotechnology presents special challenges for intellectual property development and protection. As an initial matter, the scope of the term “nanotechnology” lacks definition. A number of both governmental and NGO entities offer competing definitions of “nanotechnology.” For example, the National Nanotechnology Initiative (“NNI”) offers a definition: “Nanotechnology is the understanding and control of matter at dimensions between approximately 1 and 100 nanometers, where unique phenomena enable novel applications. Encompassing nanoscale science, engineering, and technology, nanotechnology involves imaging, measuring, modeling, and manipulating matter at this length scale.”[1]

The NNI’s definition attempts to capture several key distinctions between nanotechnology and other forms of technology, including size of the material, functionality differences between large-scale materials and nanomaterials, and new purposes beyond the possible uses of large-scale materials. Not all proposed definitions incorporate all of these different characteristics; indeed, some focus on only one aspect (i.e., size of the material) in attempting to provide a definition. However, nanotechnology is about more than “sweating the small stuff”; it is about examining the chemical, physical, and biological properties and interactions of particles so small that those properties have heretofore remained a mystery, and then developing applications to exploit those newfound properties.

Defining “nanotechnology” is further complicated by the breadth of disciplines involved in this emerging area. Biology, chemistry, computer science, engineering, medicine, and physics are a few of the disciplines currently heavily involved in nanotechnology developments. Because nanotechnology encompasses such a broad swath of disciplines, often teams of dedicated, specialized professionals must work in concert to further research and development. The scope and breadth of nanotechnology provide opportunities to develop numerous cross-use applications and products. Complex functions can be achieved in a host of unrelated applications.

As a result of these definitional difficulties, securing intellectual property protection is difficult. One consequence of such a multidisciplinary emerging field has been the awarding of overlapping interests to different entities, thereby creating conflicting claims of right.[2] Where, for example, patent examiners are not sure which “art” category to search, or where they employ limited keyword search terminology, inconsistent review of patent applications is inevitable. Where entities do not know what makes “nanotech” different, infringement of pre-existing rights is a distinct possibility.

The notion of overlapping interests is further compounded by the exponential growth in nanotechnology developments on the international stage by entities employing their own unique review protocols. Unlike other new technologies, which were often driven by U.S. inventions (and accompanied by U.S. and international protections secured by U.S. companies), nanotechnology is increasingly being developed in a number of states, such as Germany, the U.K., and Japan, which are securing protection for their developments around the globe.[3] Because different patentability standards apply in different jurisdictions, the possibility that companies are each claiming a stake to the same nanotech development is a real, and disturbing, possibility.

The possibility of overlapping claims to intellectual property is always a risk. Here, the risk is particularly critical because many of the patents that have been and are currently being filed are building-block patents—fundamental patents that can affect the development of future innovations and products to market.[4] Where parties obtain overlapping protections, a patent thicket can result: no one can develop a product without infringing another’s patent, and no one wants to “give up” rights to allow another to develop a product.[5] Can the development of technology consequently affect the types and variety of products?

All participants in the nanotechnology arena can agree that massive investments and potentially exponential returns are at risk as entities begin to bring definition to nanotechnology. Each of the following intellectual property protections can be involved in a successful strategy to develop and protect nanotechnology-related intellectual property. Failure to properly employ these protections can not only lead to disaster for an individual company, but also create hurdles for an entire field for years to come. Moreover, the failure of nanotech companies to become involved in helping to develop the regulatory and review processes also may mean that the regimes that develop do not appreciate the nuances specific to nanotechnology.

Copyright

Copyright protection is not traditionally the first area of protection explored when discussing scientific breakthroughs. Many view copyrights as a way to protect “artsy” intellectual property, while patents protect “science.” However, because copyright law provides protection for an original work of authorship fixed in any tangible medium of expression, copyright law has important implications for the nanotechnology field. Years ago, copyright became a way of protecting the development of software code and chip design. Thus, to the extent that nanotechnology designs incorporate such elements (or new elements that are analogous to software code or chip design), copyright may be a viable avenue of protection. Several nanotech companies have already begun to exploit the protections offered via copyright.[6] While it may not enable broad protection of a company’s intellectual property portfolio, copyright is useful for deterring instances of exact copying and may be employed as a corollary to other protections.

Trademarks

Trademark protection should be an early consideration. Branding of any technology is important, especially when a new product—indeed, a new field—is being born. The U.S. Patent and Trademark Office is flush with trademark applications seeking to protect all things nano.[7] Obtaining trademark and related protection for web sites and domain names can be critical to launching products in the market.

Trademarks not only enable product identification, but also assist clients in developing well-known brands that can lead to expanding market share as new developments emerge. The ability to become the market leader and the de facto standard-bearer for quality in a developing field offers an incredible marketing opportunity to companies beginning to develop nanotechnology. Securing trademark protection provides some defense against the threats posed by counterfeiting operations that attempt to pass off goods that capitalize on a company’s accumulated goodwill in the marketplace.

Companies in the nanotech space must be careful to avoid descriptive branding, as descriptive terms are difficult to trademark.[8] For example, names such as “nanosilver” and “nanoparticle” tend to be descriptive and are difficult to protect. Developing a fanciful mark that becomes synonymous with innovative nanotech designs and products is far more defensible. Moreover, to the extent that regulations concerning the presence of nanoparticles in consumer goods begin to change, the prefix “nano” may be included in a certification seal required under other regulations. Such developments can affect the value of a trademark. Trademark counsel who are aware of the developments outside the Patent and Trademark Office, including at the Environmental Protection Agency and the Food and Drug Administration, can assist companies in securing rights to defensible marks.

Once trademark protection is secured, companies must be vigilant in policing the unauthorized use of their marks to maximize the value and protect the goodwill associated with them. Especially in an area where the presence of nanotechnological applications and devices cannot be readily discerned by the public, companies that invest in the technology and market products should protect their marks from being hijacked by competitors or imposters.

Patents

Patents are by far the method most heavily relied upon by nanotechnology companies to protect their technology. However, prosecuting patents in the nanotechnology field presents several challenges related to newer, high-growth arts, as well as obstacles common throughout the current patent prosecution environment. Because of these problems, companies should expend the time to ensure that their applications are specific and carefully defined in scope. Moreover, to the extent that a patent may not fully protect a company’s intellectual property rights, the company should explore with its counsel alternative methods of protection.

Some of the problems currently experienced in obtaining nanotechnology patent protection are the result of a disconnect in technical expertise among inventors, patent counsel, and the examination corps. This knowledge gap is somewhat understandable, since nanotechnology is still a new and emerging field. However, given its astronomic growth, what may be an understandable situation is nonetheless intolerable. The National Science Foundation has estimated that the world will need approximately two million nanotech-savvy workers by 2015,[9] and a recent report by the Federal Bureau of Labor Statistics states that two of the top four fastest-growing occupations are in computer-related fields.[10] Supply has simply not kept up with demand.

Further compounding this problem is the fact that many qualified nanotechnology personnel are not pursuing opportunities with the Patent and Trademark Office. With a limited, albeit growing, number of nanotechnology undergraduate and graduate degree programs available, graduates of these programs are in high demand to work in research and production, leaving a shortage of people with high nanotech proficiency in technology support occupations such as patent prosecution and examination. This lack of expertise, combined with an erosion in the completeness and proper use of the Patent Office classification system in recent years, has resulted in the routing of nanotech applications to many different areas of the Office with little consistency. Thus, examiners are not able to develop the degree of expertise normally gained through consistent examination of similar applications. The result is inconsistent Office actions and, ultimately, inconsistent positions on patentability. The lack of expertise and poor classification, combined with a sparse population of prior art due to the developing nature of the technological area, severe time pressures inherent in the patent examination system, and the current pressure to reject all but the most clearly allowable applications in accordance with recent Office quality initiatives, combine to make nanotechnology patent examination extremely difficult and unpredictable.

The Patent Office is making strides at bridging this gap, including the introduction of educational seminars for examiners, the development of PTO Class 977 on nanotechnology as a way of referencing prior art, and hosting information sessions to obtain input from the public. However, these are only small steps to address a problem that will continue to grow as technology outpaces the examiners, who are already heavily burdened in their current roles.

Because of these additional hurdles, prosecution counsel should be conversant in the issues facing the nanotech field in order to obtain quality work product on an efficient timetable. The ability to develop a multidisciplinary team of prosecutors will be a huge advantage to any company in the nanotechnology arena, as many emerging technologies at least touch on a number of different fields. By retaining counsel with experience navigating these difficulties, companies can employ tried-and-true strategies to ameliorate these issues, including conducting multiple face-to-face or telephone interviews with the parties involved in the prosecution of a patent and employing claim-drafting strategies specific to a nonsaturated field of technology to obtain patent protection that will be cost-effective, enforceable, and of a scope that is equal to the contribution of the art.

These issues are not unique to the U.S. patent system, and thus prosecutors with know-how throughout the world will be best suited to working through these issues with their local patent offices. Because nanotechnology is being developed internationally, a comprehensive worldwide strategy for protection is vital to compete globally. Through the use of the Patent Cooperation Treaty (“PCT”) process, patent protection may be garnered throughout a multitude of national and multinational patent bodies. The PCT ability to defer nationalization and formal examination for 30 months from filing also offers companies two and a half years to further develop and examine the value and viability of inventions disclosed in applications to determine whether the inventions merit the further costs of nationalized prosecution. Whatever the technology, it is critical to those who decide to pursue patent protection that a well-developed plan is generated to consider and address the difficulties associated with nanotechnology filings both domestically and abroad.

The focus for most counsel is on patent prosecution at this stage. Moreover, in many instances, commercial nanotech products have yet to enter the marketplace. As more products come to commercial fruition and achieve marketplace success, intellectual property-focused litigation is likely to increase. With all of the difficulties identified above, it is almost a certainty that, in time, nanotechnology companies will be engaged in an increasing volume of high-stakes litigation, either because their technology infringes someone else’s patent or to protect their own nanotechnology turf. In particular, this litigation likely will focus on several issues relating to validity and enforceability that can be minimized through proper claim-drafting techniques and full prior art searches:

  • Overlapping interests across different art areas or based on overly broad claims;
  • 35 U.S.C. § 101 claims asserting that the invention is not patentable;
  • 35 U.S.C. § 102 anticipation claims; and
  • 35 U.S.C. § 103 obviousness allegations in light of existing art.

While patent protection may still be the principal way to protect nanotechnology intellectual property, there is enough unpredictability and variability in the system to warrant careful review of any patent strategy.

Trade Secrets

In light of the ambiguity caused by the emerging patent standards for nanotechnology, many companies have determined that, for the time being, trade secret protection offers sanctuary to a company just beginning to formulate its products and processes. Companies deciding whether to seek patent protection or maintain trade secrets should focus on a number of considerations:

  • Is it likely that competitors or customers can reverse-engineer the product or process such that trade secret protection will not offer optimal protection?
  • How likely is it that the Patent and Trademark Office will issue a patent on the technology that has been developed? Does it meet the tests of patentability?
  • How difficult will it be to maintain the trade secret status of the technology within the company when employees leave the company?
  • What is the life cycle of the technology before it becomes outdated or obsolete?

Answering these questions will provide guidance on the appropriate avenues of protection and the respective risks and benefits of each.

Licensing Strategies

While not a traditional form of intellectual property protection, licensing strategies have become a real-world way of protecting developing intellectual property and insuring against charges of infringement of intellectual property rights. Indeed, two (or more) parties may cross-license patents to allow all concerned to continue developments while maintaining a bar to companies using the technology that are not part of the cross-licensing arrangement.

Conclusion

Nanotechnology will change not only the products and processes that become part of our everyday lives, but also the way in which companies approach defining and protecting their intellectual property. Through a comprehensive strategy, nanotech companies can bring some order to the madness, while securing their interests from later challenge or devaluation.

Intellectual property is often the most valuable resource of a nanotechnology company. Creating new products and developing new procedures do not automatically lead to an enhanced bottom line; through the intellectual property protection mechanisms available in the U.S. and abroad, companies can protect their investments and lay the groundwork for future innovations.