Abstract for the Fourth Foresight Conference on Molecular Nanotechnology.

Intellectual Property Update

Elizabeth Enayati
Weil, Gotshal & Manges
2882 Sand Hill Road
Menlo Park, CA 94306
(415) 926-6248 phone
(415) 854-3713 fax

At the last Nanotechnology Conference, I presented a background of intellectual property as it relates to the molecular manufacturing areas of technology and disciplines.

Dramatic changes in the intellectual property fields of law occurred over the past two years that have potentially significant impact on researchers, policy-makers, and players in the nanotechnology arena. The most notable change has been in the U.S. patent laws, and specifically the change in the term of a U.S. patent from a term of 17 years, measured from the date the patent issues, to a term of 20 years, measured from the date the first U.S. patent application is filed.

Although relatively innocuous on its face, the impact of such a term will most likely be felt by researchers of early-stage technology, pioneers in certain areas of technology, and academicians. The 20-year term effectively reduces the ability of an inventor to file a patent application early in the research phase, to preserve an early international filing date, and to supplement that application with data as research progresses toward commercialization. Thus, an inventor must decide which has priority: an early international priority filing date or a long patent term. The factors involved in making that decision will be discussed.

Another change in the U.S. patent laws is the availability of "Provisional Applications". These applications are intended to allow an inventor to preserve an international filing date, without tolling the 20-year term. However, there are significant pitfalls in filing this type of application of which an inventor must be aware. The most significant pitfall being the requirement that the provisional application still must satisfy the statutory requirements of enablement as a "regular" U.S. patent application. Thus, a provisional application still must teach someone skilled in the relevant art how to make or practice the claimed invention. The enablement requirement is an important issue for inventions in the molecular manufacturing/nanotechnology fields of endeavor, and remain an important issue under the new Provisional Application procedures.

The focus of this presentation is on pitfalls and, to a more limited extent, opportunities created by the new U.S. patent law. It also is an opportunity to answer, in real time, some of the questions that arise from readers of my "Law in Technology" column that appears in the Foresight Update.