Figure I4

(a) A copy of the front page of U.S. Pat. No. 5,341,639, one of the first nanotechnology patents issued in the United States. (b) Claim 1 of U.S. Pat. No. 5,341,639.

forth in very specific terms precisely what it is that defines the invention. In this respect, they are the heart of the patent. Consistent with the view that patents are a form of intellectual "property," it is common to analogize the claims to a survey of real estate. The survey defines precisely where the boundaries of a particular property lie: If someone is within the boundary, she is a trespasser; if she is outside the boundary, she is not a trespasser. Similarly, the claims are intended to define the exact boundary of the invention: If someone develops a product that is within the boundary, he is an infringer; if he is outside the boundary, he does not infringe.

As always, such a simple rule is never quite as straightforward to apply in practice as it is in theory. For example, a real-property deed could identify one boundary by a natural feature such as a river. What happens if the course of the river changes over time? So too, with a patent, what happens if the meaning of a term in the claim changes over time? A deed could identify a boundary using a term that is ambiguous, setting the stage for an argument over the meaning of the term. In the same way, a patent claim may use terminology that different people construe differently, later precipitating arguments over exactly where the boundary of the intellectual-property rights lie. There are, indeed, countless ways in which arguments may be made over where the boundaries of the claims lie. Considerable effort is made to mitigate these possibilities by requiring that the claims be written as precisely as possible. This is reflected in a set of very inflexible rules that claims must conform with.

The written description of the invention is intended to provide support for the claims. It must describe what is being claimed in a manner that will place knowledge of the invention in the public domain. This is determined according to a number of criteria that are often treated distinctly, although they are related. In essence, the written-description portion of the application must provide enough detail about how to make and/or use what is being claimed such that it will be understood by those who are reasonably skilled in the technology. In the United States, this must include a disclosure of the "best mode" known to the inventors for practicing the invention, although many other countries do not impose this requirement.4

The combination of the claims and the written description must meet a number of specific requirements for a patent to be valid. The system that is used in most countries permits this validity to be considered at different points in time. The various requirements are considered initially by a patent examiner who reviews them when the patent is initially submitted to a patent office as an application. After the examiner concludes that all the requirements have been satisfied, the patent may be issued and enjoys a legal presumption that it is valid.

But this need not be the end of the story. That presumption can be attacked in a number of different ways. In some countries, third parties may bring new information to the attention of the patent office and ask that the patent office reconsider its determination. Perhaps more commonly, the validity of a patent may be attacked in a legal proceeding in court. In such cases, a judge or jury may be asked to review the patent in the light of evidence to determine whether all the criteria for patentability have actually been met.

Depending on how valuable the patent has become, this type of attack may be quite concerted. While the current cost for obtaining a patent is around $25,000, litigation of a patent to prove its invalidity may easily cost millions of dollars. Part of this cost may represent a near-literal scouring of the globe to prove that some requirement has not been met: Is there some obscure paper in a Chinese journal that describes a similar idea? Was some small start-up company in Greece that long ago went bankrupt making some similar product? Is the idea behind the invention described in a Russian doctoral thesis available only at a library in St. Petersburg? If an army of attorneys reads every document and e-mail found on every computer of a large corporation, can they uncover some proof that the inventor deliberately misled the patent office? The level of expense that can be justified in attacking a patent on any of a number of grounds is limited only by how valuable that patent has become in protecting the monopoly it grants in the marketplace.

ii. Patentable Subject Matter

So, what are the criteria that are considered by the patent examiner (and perhaps later considered by courts) in assessing a patent? First, the invention must be useful.5 This requirement has a very low threshold, as evident from any of the many patents that occasionally elicit quiet chuckles. In the past, this requirement was sometimes used to reject inventions that were deemed "immoral"—gambling machines, certain types of weapons, sex toys, and so forth—but now, as long as there is a tiny modicum of utility, the requirement will be met (see Figure I.5).

In addition, the invention must fall within one of several specific classes of inventions: the invention must be a process, a machine, an article of manufacture, or a composition of matter. The Supreme Court of the United States has concluded that although this list is short, it covers a great deal. Indeed, it includes "anything under the sun that is made by man."6 What it does not include are laws of nature, physical phenomena, and abstract ideas. Examples that the Supreme Court gave of "inventions" that were thus outside the list were a new mineral discovered in the earth, a new plant found in the wild, Einstein's mass energy equivalence law E = mc2, and Newton's law of gravity.

In considering nanotechnology inventions, this requirement may thus sometimes come into play. A patent claim will be invalid if it tries to claim a nanotech structure that occurs naturally. Indeed, this requirement exposes one of the weaknesses of the example used in the previous section: Because fullerenes occur naturally in soot with other forms of carbon molecules, they could not properly be patented by themselves. Similarly, a researcher who

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3 Inventor

3if' bis Attorney

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