Nanotechnology Patenting in the US

Patents are the strongest form of intellectual property protection and are essential to the growth of a nanotechnology company. Similar to their importance to the development of the biotechnology and information technology industries, patents will also play a critical role in the success of the global nanotechnology revolution. In fact, patents are already shaping the nascent and rapidly evolving field of nanoscience and small technologies. As companies develop the products and processes of nanotechnology, and begin to seek commercial applications for their inventions, securing valid and defensible patent protection will be vital to their long-term survival. In this article, Dr. Raj Bawa presents key patent strategies for a small tech inventor. He first provides an overview of the business of patenting. He then engages in a detailed analysis of nanotechnology patent issues. Specifically, he discusses: searching nanotechnology patents, the importance of nanotech patents in the media, nanotech patent trends, strategies involved in patenting, the costs of obtaining nanotech patents, foreign patenting, the future of patents in nanobusiness and challenges facing the PTO. I. THE BUSINESS OF PATENTING: AN OVERVIEW alph Waldo Emerson in an 1871 lecture said, “If a man can . . . make a better mousetrap, though he builds his house in the woods, the world will make a beaten path to his door.” Some inventors misconstrue Emerson’s dictum and expect that simply obtaining a patent will guarantee success. Others realize that obtaining a patent does not automatically ensure commercial reward. Still others find that patents sometimes cost much more than they are worth. Detractors complain that legal monopolies hinder free market competition. They argue that a climate of excessive ownership and secrecy has a chilling effect on research and restricts free communication between researchers. So, does the US patent system add “the fuel of interest to the fire of genius,” as Abraham Lincoln observed? All * Dr. Raj Bawa is president of Bawa Biotechnology Consulting, LLC, based in Arlington, VA. The firm specializes in all aspects of biotechnology, nanotechnology and chemical patent prosecution, including application drafting, patent searching, assignment searching and validity opinions. Dr. Bawa is a registered patent agent licensed to practice before the US Patent and Trademark Office. Additionally, Dr. Bawa holds a faculty position as an adjunct assistant professor in the School of Science at Rensselaer Polytechnic Institute in Troy, NY, and serves as an advisor to the Office of Technology Commercialization. The author may be contacted at bawabio@aol.com. 1 From a speech given in Springfield, Illinois on February 5, 1859. R 1 Bawa: Nanotechnology Patenting in the US