NANOTECHNOLOGY - Patent Lawyers Club of Washington

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6 Δεκ 2012 (πριν από 4 χρόνια και 4 μήνες)

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March 2006

1

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

Bruce Kisliuk, USPTO

Group Director, Technology Center 1600

Biotechnology, Pharmaceuticals, Organic Chemistry

571
-
272
-
0700

Bruce.Kisliuk@uspto.gov





March 2006

2

Nanotechnology Issues



Nanotech Patents
-

How to define




Classifying Nanotechnology Patents





Nanotech Patenting Statistics




USPTO Customer Partnership Initiative




Examining and Prior Art Issues




Patentability Issues


March 2006

3

Nanotechnology Patents



how to define them


What defines a “Nanotechnology Patent”


Look at NNI definition



Based on a text search and manual review,
currently a limited number of patents that
actually claim a nanotechnology invention



Many more patents that include nanotech
-
related terms in the disclosure



March 2006

4

Classification Issues


Cross
-
Reference Art Collection


Appended to a class schedule or grouped as a
separate class


Populate with the small number of existing
documents from IPC Class B82B associated with
their specific technical fields


Identify additional U.S. patent documents through
key word searches and screening of relevant U.S.
classifications to add to the collections


Established a new Nanotechnology cross
-
reference digest,
Class 977
, in October 2004.

March 2006

5

Classification Issues


Class 977 Digest (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


Started this project 2 years ago


Team of about 25 examiners reviewed and assigned these
documents into the new subclasses


Currently up to about 3170 documents placed, including over
2650 patents and 515 Pre
-
Grant Publications.


March 2006

6

Current Class 977 Patents

Technology Center

Number
of Patents

1600
-

Biotechnology and Organic Chemistry

816

1700
-

Chemical and Materials Engineering

660

2100
-

Computer Architecture Software and Info. Security

2

2600
-

Communications

155

2800
-

Semiconductor, Electrical, Optical Systems

622

3600
-

Transportation, Construction, Electronic Commerce

31

3700
-

Mechanical Eng., Manufacturing and Products

362

Total

2648


As of January 1, 2006

March 2006

7

Current Class 977 Patents

(based on the year the patent issued)

Year
TC1600
TC1700
TC2100
TC2600
TC2800
TC3600
TC3700
total
1974
0
0
0
0
0
0
2
2
1975
0
0
0
0
0
0
1
1
1976
0
0
0
0
0
0
0
0
1977
0
0
0
0
0
0
0
0
1978
1
0
0
0
0
0
0
1
1979
0
0
0
0
0
0
0
0
1980
1
2
0
0
0
0
1
4
1981
1
1
0
0
0
0
1
3
1982
0
3
0
0
0
0
0
3
1983
0
1
0
0
0
0
1
2
1984
0
1
0
0
0
0
3
4
1985
1
1
0
0
0
0
0
2
1986
0
2
0
0
1
0
1
4
1987
2
0
0
0
0
0
5
7
1988
0
7
0
0
0
0
0
7
1989
4
8
0
0
4
0
1
17
1990
1
12
0
0
1
0
0
14
1991
6
3
0
3
6
0
4
22
1992
8
5
0
4
18
0
7
42
1993
3
3
0
7
24
0
3
40
1994
14
5
0
7
28
0
6
60
1995
13
5
0
10
21
0
7
56
1996
34
12
0
10
14
0
13
83
1997
43
12
0
5
20
2
12
94
1998
56
21
0
14
26
2
21
140
1999
84
172
0
8
28
0
23
315
2000
76
45
0
6
11
2
30
170
2001
113
46
0
22
47
3
40
271
2002
137
60
1
16
131
8
48
401
2003
201
122
1
21
180
7
69
601
March 2006

8

Distribution Across Technologies

(patents and pre
-
grant publications)

Biotechnology

26%
Electrical
30%
Chemical
23%
Mechanical
21%
(Years ’74’
-
05)
TC 1600 TC 1700 TC 2100, 2600, 2800


TC 3600, 3700



Biotechnology


Chemical


Electrical

Mechanical




823 729 958 652

March 2006

9

Distribution Across Cl. 977 “Out Dents”

902:
SPECIFIED
USE
OF NANOSTRUCTURE
30%
963:
MISCELLANEOUS
839:
MATHEMATICAL
ALGORITHMS, E.G., COMPUTER
SOFTWARE, ETC.,
SPECIFICALLY ADAPTED FOR
MODELING CONFIGURATIONS
OR PROPERTIES OF
NANOSTRUCTURE
700:
NANOSTRUCTURE
38%
840:
MANUFACTURE,
TREATMENT,
OR DETECTION OF
NANOSTRUCTURE
31%
March 2006

10

Patents As a Statistical Measure

Factors to consider regarding patent statistics:


Select between Patent Grants and Patent Applications. Grants issued
reflect the actual IP protection, but applications filed are closer to the
time of invention. Often consider the time of application filing of patents
that are granted.


Clarify the definition of nanotechnology being used to identify a
nanotech
-
related patent.


Select how to screen for nanotech
-
related patents. For example, using a
key
-
word search (of the full
-
text or only certain sections of the patent
document), or alternatively search by classification (if one is available).


Select how to define the origin or assignee/company on the invention.
For example, residence/country of first named inventor, or country of
company of ownership/assignee (if available).

March 2006

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.


March 2006

12

Statistics for Nanotechnology
-
Related U.S. Patents

Data on U.S. Patents is fairly consistent regardless of the way
it is searched, about
60% of U.S. Patents related to
nanotech are U.S.
-
origin

(awarded to U.S. inventors or
U.S. assignees/owners).


Huang et al paper 2004
,
key
-
word search on seven basic nanotech terms in USPTO
data base, country based on assignee or owner. Whether search of full
-
text or just
title/claims, whether 1976
-
2002 or just 2003,
about 60% U.S.
Patents awarded to
U.S. inventors or U.S. assignees/owners.



Informal search of patents placed in new USPTO cross
-
reference Class 977 on
nanotechnology (placement project not yet complete), whether
first named inventors

or
assignees/companies
, whether 1977
-
2004 or just 2003,
about 60% U.S.
Patents
awarded to U.S. inventors or U.S. assignees/owners.



Next most active countries: Japan, Germany, and France


March 2006

13

Global Patent Statistics


Informal search using Derwent World Patent Index (DWPI).


DWPI includes about 40 countries.


Identify nanotechnology by either Derwent codes for nanotechnology
or nanotechnology International Patent Classification (IPC) codes
(did
not use key
-
word search because it would be limited to English language
translations of abstracts for many foreign patent publications)


Identified any type of patent publication (includes pre
-
grant
publications as well as grants).


Evaluated nanotech
-
related patent publication data in a variety of
aspects:


Country of first
-
named inventor


Country of assignee/owner


First occurring patent publication


Same inventions filed in 3 or more countries


March 2006

14

Patent Global Statistics
-


First Occurring Patent Publication


Using the country of first
-
named inventor, 1986
-
2003,
26.6% nanotech
-
related to U.S. inventors (highest).


Next countries: China (25.3%), Japan (19.7%), Germany (8.2%)


Using the country of assignee or owner, 1986
-
2003,


31.1% nanotech
-
related to U.S. assignee/owner (highest).


Next countries: China (25.2%), Japan (17.3%), Germany (8.4%)



China has one year (2001) of over 900 publications which appears to be an
anomaly
since year before was about 15 and year after was about 60.


Data on country of inventor in DWPI is incomplete, missing in about 40% of
hits. The percent cited is of those hits with a known country of inventor.


This evaluation only counted the first occurring patent publication for a single
invention, since many inventions are filed in multiple countries




March 2006

15

Patent Global Statistics
-



Invention filed in 3 or More Countries


Using the country of first
-
named inventor, 1986
-
2003,
31.0% nanotech
-
related to U.S. inventors (highest).


Next countries: Japan (26.7%), Germany (11.5%), Korea (6.8%)


Using the country of assignee or owner, 1986
-
2003,
37.4% nanotech
-
related to U.S. assignee/owner (highest).


Next countries: Japan (25.2%), Germany (10.8%), Korea (5.8%)



This evaluation counted inventions with patent publications in three (3) or
more countries. This would indicate inventions in which a high level of global
protection in multiple countries was being pursued.


March 2006

16

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.


While there is a high number of Chinese patent publications in one year
(2001), this appears to be an anomaly, and is not reflected in the data
regarding filings in 3 or more countries.





March 2006

17

USPTO Nanotechnology

Customer Partnership (NCP)


Inaugural event at USPTO on Sept. 11, 2003


Annual meetings April 20, 2004 and May 4, 2005. Next
NCP scheduled for March 28, 2006.


Goals of the Partnership:


Sharing concerns and information


Establishing technical training programs for examiners


Helping identify sources of prior art


Helping applicants better understand what we do,
hopefully lead to better applications and better patents


March 2006

18

Nanotech Customer Partnership

Contacts and Information:


To be added to the USPTO Nanotechnology Customer
Partnership emailing list, to offer a speaker for technical training for
USPTO examiners, or to suggest a source for searching
nanotechnology
-
related prior art:




Jill Warden, SPE 1743
, 571
-
272
-
1267


Jill.Warden@USPTO.GOV



For other general nanotechnology
-
related or examination
-
related
issues:



Bruce Kisliuk, Group Director TC1600
, 571
-
272
-
0700


Bruce.Kisliuk@USPTO.GOV



March 2006

19

Examination & Searching


Due to multi
-
disciplinary nature of nanotech,
currently no specific nanotech Group or Art Unit


Currently identifying examiners in each Technology
Center and building expertise


Most activity in:


TC1700 (materials),


TC2800 (semiconductors), and


TC1600 (biotech/pharmaceuticals)


March 2006

20

Examination & Searching


Searching is done using normal examiner
resources (patent files and NPL via
automated search systems and EIC
support).



STIC Nanotech Resource Page, examiner
source of books
-
journals, classification
(Derwent codes and IPC), data bases,
reference tools, and Web resources.


March 2006

21

Patentability Issues

in Examining Nanotech



35 USC 102


Inherency



35 USC 103


Obvious to make smaller (?)



35 USC 112, 1st Paragraph, Enablement



Product
-
by
-
Process Claims



Case Law Related to Changes in Size

March 2006

22

35 USC 102


Inherency


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. In re Best, 562


F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).



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. Ex parte Levy, 17
USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990).



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. Schering Corp. v.
Geneva Pharm., 68 USP2d 1760 (CAFC 2003).



March 2006

23

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)


March 2006

24

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

March 2006

25

Product
-
by
-
Process Claims


The patentability of a product does not depend on its method of
production. If the product in the product
-
by
-
process claim is the
same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966
(Fed. Cir. 1985)



The structure implied by the process steps should be


considered when assessing the patentability of product
-
by
-


process claims over the prior art, especially where the


product can only be defined by the process steps by which


the product is made, or where the manufacturing process


steps would be expected to impart distinctive structural


characteristics to the final product. See, e.g., In re Garnero,


412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)



March 2006

26

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


March 2006

27

Thank You

Bruce Kisliuk, USPTO

Group Director, Technology Center 1600

Biotechnology, Pharmaceuticals, Organic Chemistry

571
-
272
-
0700

Bruce.Kisliuk@uspto.gov