Broad Claiming in Nanotechnology Patents: Is Litigation Inevitable?
Volume 4, Issue 1
Sean O'Neill, Stetina Brunda Garred & Brucker P.C.
Kirk Hermann, Shimokaji & Associates
Marlene Klein, Canon U.S.A.
Jeff Landes, patent attorney
Raj Bawa, Bawa Biotechnology Consulting, LLC
Nanotechnology is expected to faciliate great advances in energy, materials and medicine. Inventors, corporations, and governments are staking their claims to the rapidly-growing body of nanotechnology intellectual property. Patents are issuing with far-reaching rights, leading some to question the validity and scope of these patents. Concerns are arising on potentially overlapping patent claims in some sectors of nanotechnology. Contributing to the problem of patent overlap is the use of broad terms in the claims of nanotechnology patents. Clarification as to the meaning of the claim terms is sometimes available in the specification portion of the patent. The prosecution history of the patent application may also clarify the meaning of nanotechnology claim terms. The USPTO’s recent creation of a new art classification system for nanotechnology and the development of standardized nanotechnology terminology is reducing the ambiguity regarding claim terms and thereby eliminating some of the uncertainty regarding ownership rights to nanotechnology.
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