Figure I7

(a) A gear constructed at MEMS scales. (b) A drawing of a gear constructed at NEMS scales.

Discussion

1. Sometimes two people independently invent the same thing. In most countries, the first of these people to file a patent application with the patent office is the one entitled to the patent. The United States is alone in taking a different view and grants the patent to the first one who actually completed the invention. Does one approach disadvantage small inventors? Which approach better meets the public-policy objectives of the patent system?

2. In the United States, patent applicants are required to disclose to the patent office any information that may be material to examination of an application. Most often this takes the form of providing prior-art references to the examiner that the applicant is aware of and that might bear on patentability issues. In most other countries this duty does not exist, but members of the public are given an opportunity to oppose the grant of a patent before it issues by presenting evidence of unpatentability. Which system is more likely to prevent the allowance of invalid claims? Discuss ways in which each of these systems might be subject to abuse. What types of reforms would reduce the ability to engage in those abusive practices?

3. Figure I.7 compares a MEMS gear and a NEMS gear. What arguments can you develop that the NEMS gear is patentable over the MEMS gear? Do you think those arguments would be effective? What additional evidence could be submitted to overcome the weaknesses in your arguments?

3. Riding the Patent Office Pony

In the early days of the United States, the procedure for determining whether to grant a patent to an inventor was remarkably streamlined. From a modern perspective, it seems almost quaint. Signed into law by the president on April 10, 1790, the first U.S. patent statute directed applicants to file a petition with the secretary of state, who would then vote with the secretary of war and attorney general whether they thought "the invention or discovery sufficiently useful and important."14 If a majority of them thought so, a patent would be awarded to the applicant. To be sure, there were requirements that the application had to meet in the form of a written description, drawings, and possibly a working model. And this committee quickly began to generate standards by which to evaluate applications. But the overall procedure has the air of having been rather informal.

i. The Current State of the U.S. Patent Office

This seems especially to be the case when considering the current state of the U.S. Patent and Trademark Office, which employs on the order of 5000 examiners. This army of examiners is responsible for the examination of the hundreds of thousands of applications that are filed every year. In 2006, the patent office received more than 440,000 new applications for patents but completed examination of only 332,000 applications—a shortfall of some 100,000 applications that contributed to the existing backlog.15 Applications are filed by applicants from around the world in every conceivable technology area. In some ways, this is a testament to the success of the U.S. patent system. The widespread desire to obtain U.S. patents highlights the significant value that they are seen to have, not only within the borders of the United States, but throughout the world. At the same time, the volume of applications that must be considered by the patent office is ever more frequently described with language reminiscent of disasters having biblical proportions.

Nanotechnology applications have been part of the increase, and even outpace the overall rate of increase to the patent office as a whole. Figure I.8 provides an illustration of the growth in nanotechnology applications that have been submitted to the U.S. Patent and Trademark Office over the last fifteen years. The trends seem to evidence having passed a barrier in which commercialization of nanotechnology inventions is now possible.

The data used to generate the graph in Figure I.8 was collected by searching issued patents and published patent applications for the appearance of certain terms that are related to nanotechnology. One reason that this was done is that, until very recently, the patent office provided no specific classification for nanotechnology. The reason for this is at least twofold—first, the technology is so new that a particular need for a specific nanotechnology classification is only beginning to be recognized; and second, nanotechnol-ogy is, by its very nature, highly interdisciplinary. At the same time that this interdisciplinary nature has real benefits—permitting the sharing of relevant information by those from different areas of expertise—it also resulted in a certain fragmentation of how nanotechnology patents were evaluated by the patent office.

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