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Overlapping patents are already emerging for nanotubes, the cylinders made up of a layer of carbon atoms, either a single tube or multiple tubes within each other. In a 1991 article in Nature, NEC Corporation researcher Sumio Iijma reported that he had created a carbon nanotube. Two years later, IBM filed a patent application that resulted in a claim for “[a] hollow carbon fiber having a wall consisting essentially of a single layer of carbon atoms.” The timing of the patent application raises questions as to whether it was truly novel given that such a compound had been discussed in a scientific journal several years earlier.
A study of nano patents published in 2005 by researchers from Arrowhead Research (a publicly traded nanotechnology company), Canon USA, and the NanoBusiness Alliance found 306 nanotube patents, including 10 patents claiming the nanotube itself and 20 patents on nanotube production methods, which could lead to litigation as various patent holders assert rights against each other.
The USPTO tried to deal with the issue of overlapping nanotechnology patents by holding meetings with industry representatives and creating a cataloging system which puts the label “Class 977” onto certain technologies related to “nanostructures.” The USPTO defines a nanostructure as “an atomic, molecular, or macromolecular structure that: (a) Has at least one physical dimension of approximately 1-100 nanometers; and (b) Possesses a special property, provides a special function, or produces a special effect that is uniquely attributable to the structure’s nanoscale physical size.”
The USPTO reviewed previously issued patents to determine retroactively which should be classified under 977. However, the 977 classification has many exceptions. For example, enzyme and protein complexes are generally excluded from 977. Viruses utilized for viral functions are categorized in separate classes, rather than 977. But, a virus utilized to form a nano structure is included in the 977 classification.
With funding from the National Science Foundation and the U.S. Department of Energy, we examined all nanotechnology patents issued from 1976 to 2006 that involved a particular nanotechnology—quantum dots. We found 307 such patents, with 6,769 claims. However, of the 307 nanotechnology patents claiming quantum dot technology we located, only one in five had been catalogued in Class 977, which might make it more difficult for patent examiners to locate relevant material about previously granted nanotechnology patents. This may be why duplicate patents are being granted to separate inventors on the same technology.
It’s unclear what the future of nanotechnology will bring. The U.S. Department of Energy predicts nanotechnology will revitalize biotechnology and medicine. But overly broad patents—like IBM’s patent on the carbon nanotube—might create a patent thicket. The FDA and USPTO must come up to speed on the ABCs of nanotechnology—including Atomic Auto Film, Buckyballs, and Carbon Nanotubes—for the business of nanotechnology to go forward.
Lori Andrews, J.D., is a law professor and the director of the Institute for Science, Law and Technology at the Illinois Institute of Technology and Julie Burger, J.D., is the assistant director of the Institute.
