February 2015
Intellectual Property Today
Authored by Darren M. Jiron
The nanotechnology sector has witnessed an explosion of innovation over the past decade. Fundamental advances in particle science have led to the creation of materials exhibiting a host of new and useful properties. Coatings are harder and glossier, vaccinations are more effective, UV-blocking sunscreen can be made transparent, and the list goes on.
And, more is on the way. Innovative companies are currently developing (and successfully producing) tiny batteries, nano-structured surfaces that ward off bacteria, magnetically-controlled microbots, and nanofilament-impregnated contact lenses capable of enabling an HD virtual reality or augmented reality display at a user's eye. Advancements in nanotechnology are the driving force of innovation in a diverse array of technology areas from cosmetics to consumer electronics and from medical devices to microscopy.
These advances in nanotechnology have also prompted many new patent applications in this area, as companies seek to protect important innovations. Studies have shown that the number of nanotechnology-related patent applications is increasing and has more than tripled since the early 2000's. Further, the number of issued patents in this area is increasing at a yearly rate of nearly 20%. As these numbers suggest, nanotechnology-focused patent applications may be finding relatively little resistance from the major patent offices.
Several factors may be contributing to this phenomenon. For example, the fundamental nature of many nanotechnology advances can mean that the patent offices have less prior art to rely upon in making claim rejections. Additionally, patents may be available even for classes of well-known material systems, where, for example, nano-scale manipulation of those materials leads to new capabilities or unexpected properties. While metal oxide sunscreens have been known for years (a fact suggesting limited availability of new patents in the area), new techniques for nano-scale manipulation of the metal oxide particles size of these sunscreens have led to average particle sizes of less than 100 nm. Not only do these very small particles sizes render the sunscreens transparent (as they allow incident light to pass through unaffected), they also generate new patenting opportunities. Among other possibilities, patent claims could be directed to the sunscreen material with its reduced average particle size or a novel shape of the included particles. Patent claims may even be available, more generally, for a new class of transparent, metal-oxide sunscreens.
While there may be a wealth of opportunity in obtaining patents in the nanotechnology area, patent owners must remain vigilant in seeking good patents that will matter to competitors and stand up to the challenges of litigation. Often, patent owners go wrong by approaching their patent program merely as a "check-box" item put in place to satisfy investors. In this approach, the focus is merely on "getting patents" without consideration for how well those patents will end up blocking future competitors.
Such "check-the-box" patents often fail to provide a company with adequate protection. To a lay person unskilled in patent law, these patents might look valuable. They may contain drawings and description of important innovations. But this alone does not make a patent strong. The scope of the patent, as defined by the patent claims, must be strategically developed to block competitors and stand up in court. Without strategic forethought, these important goals are often missed. And when this happens, as it often does, companies who think they have strong protection may actually have patents with gaping pathways that enable competitors to access and copy features critical to corporate revenue.
Additionally, this "check-the-box" approach to patenting often results in large and expensive portfolios of patents that provide a false sense of security, but fail to keep competitors away. In some instances, this can be worse than having no patents at all.
Not only can the "check-the-box" patenting approach be dangerously ineffective, but it can also undermine corporate value in the eyes of investors. Today's investors are becoming increasingly sophisticated about patents. Rather than looking merely to see whether a company has patents or not, investors are closely inspecting corporate patent portfolios to carefully assess the blocking power of patents. In valuing companies, investors want to understand things like exactly what the company's patent claims cover, the scope of the blocking positions, and how well the company's patents will hold up during litigation. In other words, they want to know how effective the patents will be against the competition.
Rather than patenting simply to "check the box," a better approach is to think big picture even when patenting small, nanotechnology-based innovations. Patent owners should take a "business first" approach when deciding what features to patent and how to best claim those features.
To maximize corporate value and avoid the potential pitfalls of "check-the-box" patenting, nanotechnology companies need a sound patent strategy. They should identify, early on, what aspects of their technology are most important to the company and make sure to establish strong patent blocking positions designed to protect those innovations. Patent owners that fail to keep the company's business goals in mind when patenting are at risk of obtaining patents that fail to adequately limit access to the technology most important to the company's business. As a result, competitors may be free to copy and use in their products the very technological innovations that the company developed through hard work and R&D investment. More importantly, such unhindered competitor access to a company's technology can seriously threaten the company's survival. Simply having patents is not what matters. What matters is having patents with the power to meaningfully stop competitors.
Nanotechnology companies must also strive to obtain patents that will stand up to the challenges of litigation. The fundamental nature of many nanotechnology innovations can lead not only to new opportunities for patenting, but can also prompt the creation of new phrases and words to describe previously undiscovered techniques, properties, and phenomena. In other cases, words with established meanings may be re-used for a different purpose in describing a new aspect of a nanotechnology innovation.
When these new or repurposed words find their way into the claims of a patent, they can potentially create difficulties down the road in litigation. For example, if a court finds that a newly coined nanotechnology claim term does not have a recognized plain and ordinary meaning in the field, it will look to the technical disclosure in an attempt to interpret the claims. If the term in question is not adequately described, the court may have difficulty in assigning a meaning to the claims. For repurposed terms, a court would likely interpret the repurposed term in the traditional sense absent a description of the term's new usage provided in the patent disclosure. Both situations can lead to claim interpretations different from what the patent owner intended, which could potentially adversely affect the patent owner's ability to enforce the patent in the intended way.
Nanotechnology companies should also watch out for patent claims that pose challenges in recognizing or proving infringement. For example, it may be difficult to determine if a competitor is infringing a patented process for generating a new nanostructure, unless inspection of a competitor's nanostructures could reveal how those nanostructures were made. Additionally, while it may be possible to prove that a competitor's products include a claimed invention focusing on super-small features (which are obviously common in nanotechnology-based innovations), such proofs may require the aid of some heavy-duty microscopy equipment and sophisticated laboratory analysis techniques. This can lead to added costs in enforcing the patent and may also complicate litigation.
While patent claims to manufacturing processes and small features are certainly viable for nanotechnology innovations, companies that think big when patenting nanotechnology innovations might focus, as a first line of defense, on a different type of patent claim. For example, in many instances, nanotechnology innovations result in new performance characteristics or new physical properties of a particular materials system. Such situations may provide an opportunity to focus the patent claims not just on the nanotechnology innovation responsible for the new performance characteristic or property, but on the characteristic or property themselves. For these types of claims, infringement may be easier to recognize and to prove during litigation, especially where a jury is involved.
And, from a business perspective, claims directed to the properties and performance characteristics flowing from nanotechnology innovations make sense. Consumers are more likely to be drawn to a particular product, such as a marketed metal-oxide sunscreen, because it is transparent and doesn't make their noses white. The fact that the transparency results from a particular faceting arrangement on the sunscreen particles, the nanoscale size of the sunscreen particles, or from an innovative process used to make the sunscreen is likely of less concern to consumers. In a similar way, claims directed to the faceting, particle size, or manufacturing process may be of less concern to competitors, especially if competitors can offer the performance features attractive to consumers without using a specifically claimed faceting arrangement, particle size, or manufacturing process.
The nanotechnology field promises a multitude of innovations in the coming years affecting nearly every facet of technology. Thinking big picture when developing patent strategies will help the companies working hard to create those innovations keep them from competitors.
Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.