Nanotechnology: Beyond the Hype

In short, nanotechnology has become overused in the business world. Touted as “the next big thing” in the business and investment communities, everyone wants to tag along with the promise of success. In many cases, companies are improperly casting themselves as nanotechnology-based companies to take advantage of programs designed to foster this new industry. Much like the dot-com craze, if left unchecked this could spell trouble for legitimate nanotechnology companies and their products.

Defining the Industry

In its purest sense, nanotechnology is defined as:

• Including materials on the scale of one to 100 nanometers;
• Having a physical property as a result of this size scale;
• And in some cases, technologies that manipulate properties on this scale.

The field of nanotechnology encompasses many scientific disciplines, such as chemistry, biology, physics and material sciences, among others. Because nanotechnology is a combination of existing scientific disciplines, nanotechnology is not truly a “new science.” Today’s nanotechnology is maturing into a sector that produces and develops materials having unique properties due to their nanoscale size or manipulation of their molecules at the atomic level.

Nanotechnology is reported to be productive in:

• Enhancing materials with desirable properties such as high strength;
• Creating information technologies such as quantum computing;
• Contributing to advances in the medical field for drugs, gene delivery and materials;
• And creating environmental benefits such as water purification and artificial photosynthesis.

In view of these applications, it is clear why the promise of this field is so exciting to science, business and investors. And it’s also clear that to protect the success of true nanotechnology ventures, the industry must adopt a consistent standard or definition of the term “nanotechnology.”

Protecting Nanotechnology Products

Many of the companies that create nanotechnology products are concerned they might face unique intellectual property challenges to protect their products – especially when it comes to securing patents on the technologies.

In analyzing their concerns, however, it’s clear that nanotechnology as a whole can be protected in the same way as other scientific advances and products. It simply requires a clear understanding of the science to apply existing law to new challenges.

How to surmount the challenges with proven IP law techniques:

• Claim the invention in language that clearly defines the technology, while providing accurate and detailed information in the specification.
• Adequately claim and describe new properties resulting from the reduction in size. If the only difference in the proposed nanotechnology invention is a reduction in size of existing compositions without a connected new property as a result of the reduction in size, prior art may present an insurmountable obstacle.
• Existing patents with claims to compositions without size limitations may be construed by a court to encompass similar compositions reduced to nanoscale size.
• Work with the USPTO examiner to educate the examiner on the technology. It’s important to note that the USPTO is working to increase the number of examiners skilled in nanotechnology and the many fields that comprise the discipline.
• If an applicant is concerned the USPTO examiner might be unable to adequately search the prior art of several disciplines because of unfamiliarity with some of the disciplines, an applicant should consider providing the relevant art to the examiner. This supports the goal of obtaining a commercially and legally viable patent.

These situations are not unique to nanotechnology; it’s simply a matter of understanding the potential obstacles and trying to avoid them by filing a clear and concise application from the beginning.

The Business Front

As with the dot-com craze and, to a lesser extent, the biotech frenzy, nanotechnology is an intriguing science earning attention from investors. To protect the integrity of the discipline and those companies validly offering nanotechnology products, it is important to look past names and buzz words and focus on the technology.

For example, Asensio & Company has successfully challenged Merrill Lynch for improperly including alleged nanotechnology companies in its nanotechnology index. Nanotechnology is a hot area to watch.

By focusing on the technology and applying technical law with expertise, we can help perfect nanotechnology IP without contributing to misinformation surrounding this new industry.

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