By Laurie N. Jacques:

A recent Nanowerk Spotlight likens the rush to secure nanotechnology patents to the Oklahoma land rush of 1889, in which “sooners” entered the territory before the legal time of entry to claim the choice homesteads. The “sooners’ in the nanotechnology patent rush are said to be those who, while not intentionally violating any rules, may have obtained unduly broad patents early and, like the “sooners” of old, find their claims subject to challenge.

Early nanotechnology patentees are more like explorers who laid claim to broad swaths of beachfront property – at low tide. None of them can be certain of the scope of the claims they will have after the tide of legal challenges rolls in. Some will find themselves still in possession of valuable beachfront property. Others will find their claims severely eroded or even swept away.

What differentiates those on the high side of the tide line from the rest? The nature of the invention, attention to the prior art, patent drafting skill, and sometimes even luck. The Spotlight focuses on inadequate disclosures in early nanotechnology patents resulting from the lack of standardized technology in a developing field, applicants seeking “windfall” claims that exceed the scope of the disclosure, and delayed nanotechnology training for patent examiners, leaving the patents vulnerable to challenge under 35 U.S.C. §112. Early – and even more recent – nanotechnology patents also may be vulnerable to challenges based on obviousness under 35 U.S.C. §103, especially in view of the U.S. Supreme Court decision in KSR v. Teleflex, No. 04–1350.

[Editor’s note: check back soon for a more detailed discussion of Teleflex]