Notes

1. King, Ross. 2000. Brunelleschi's Dome: How a Renaissance Genius Reinvented Architecture. New York: Walker & Company.

2. Shirai, Yasuhiro, Osgood, Andrew J., Zhao, Yuming, Kelly, Kevin F., and Tour, James M. 2005. Directional Control in Thermally Driven Single-Molecule Nanocars. Nano Letters 5: 2330-2334. This article, describing the original nanocar, was the most accessed article of all American Chemical Society journals in 2005, reflecting the wide interest in general nanotech structures.

3. Morin, Jean-Francois, Shirai, Yasuhiro, and Tour, James M. 2006. En Route to a Motorized Nanocar. Organic Letters 8: 1713-1716.

6. Diamond v. Chakrabarty, 47 US 303 (1980).

9. Interferences are quasi-judicial processes that allow proof to be submitted to establish which of multiple parties claiming to have developed an invention did so first. 35 U.S.C. §135. The proceeding is usually presided over by a panel of three patent law judges who sit on the Board of Patent Appeals and Interferences. 37 C.F.R. §§ 41.200-41.208.

10. Strictly, many countries employ an "inventive step" standard in addition to the novelty requirement. While not exactly the same, the requirement that an invention exhibit an inventive step is similar to the U.S. requirement that the invention not be obvious.

11. KSR International Co. v. Teleflex, Inc., 550 U.S., 127 S. Ct. 1727 (2007).

12. Fromson v. Advanced Offset Plate, Inc., 755 F.2d 1549, 1556 n. 3, 225 USPQ 26, 31 n. 3 (Fed. Cir. 1985).

13. See, for example, In re Rose, 220 F.2d 459 (CCPA 1955); In re Reinhart, 531 F.2d 1048 (CCPA 1976); Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984).

14. Act of April 10, 1790, 1 Statutes at Large 109.

15. "Fiscal Year 2006: A Record-Breaking Year for the USPTO." Press Release by the U.S. Patent and Trademark Office, December 22, 2006.

16. Robeson, David J., May 2006. Nanotechnology and the USPTO, The Disclosure. National Association of Patent Practitioners.

17. USPTO Classification Order 1850.

20. Recently, an alternative to this procedure was introduced that permits applicants to request that the conference be held before filing the appeal brief, with consideration of the issues being based on a much shorter description of the applicant position. This procedure was introduced to account for the fact that in roughly 50 percent of all cases, the other participants in the conference disagreed with the examiner. The objective of permitting the conference to take place before submission of the appeal brief is to avoid preparation of such a detailed document in many circumstances.

21. Spurred by inconsistencies in the way patent cases were being handled, the United States created the Court of Appeals for the Federal Circuit in 1982 to provide a single appellate court that would hear all patent appeals. The objective was to increase consistency and predictability in the way patent law was interpreted, although criticism sometimes still remains that this objective has not been well accomplished. In addition to patent cases, the court hears appeals involving international trade, government contracts, trademarks, certain money claims against the U.S. government, federal personnel, and veteran's benefits.

22. Manual of Patent Examining Procedure, §708.02.

23. Special status for biotechnology applications is available only for "small entities," which are essentially individual inventors, small business concerns having fewer than 500 employees, and nonprofit organizations. 37 C.F.R. §1.27(a). There are certain other advantages available for small entities, the most significant of which is a 50 percent reduction in most fees paid to the patent office.

24. In addition to the technology areas discussed, special status may be afforded to applications in which an applicant is in poor health or is of an advanced age, in which manufacture of the invention is awaiting successful grant of a patent, or where an infringing product is already on the market. Individual requirements must be met for each of these categories and they may also provide a basis for obtaining special treatment for a nanotechnology (or any other) invention.

25. This and a number of other anecdotes describing the early days of the patent system in the United States may be found in Dobyns, Kenneth W. 1994. The Patent Office Pony: A History of the Early Patent Office. Fredericksburg, VA: Sergeant Kirkland's Museum and Historical Society.

26. Sandburg, Brenda. July 30, 2001. Battling the Patent Trolls. The Recorder.

28. SCM Corp. v. Xerox Corp., 645 F.2d 1195 (2d Cir. 1981); In re Xerox Corp., 86 FTC 364 (1975).

29. Shapiro, C. 2000. Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard-Setting. Innovation Policy and the Economy, 1:120.

30. Dobyns, Kenneth W. 1994. The Patent Office Pony: A History of the Early Patent Office: Fredericksburg, VA: Sergeant Kirkland's Museum and Historical Society.

33. The categories defined in 17 U.S.C. §102(a) are: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.

40. Musical works present a number of difficulties in copyright law, particularly in determining how the general originality requirement is to be evaluated when comparing with other musical works. These issues exist even in conventional applications of copyright law. A more detailed discussion of these issues can be found in Nimmer on Copyright, Chapter 2 (Melville B. Nimmer and David Nimmer, Matthew Bender & Company, 2006).

41. The answer to these questions is, in fact, clear. When the U.S. Congress extended copyright protection to architectural works, it defined building as something that is designed to be occupied by humans, giving houses, office buildings, churches, and museums as examples. Furthermore, to qualify as a building, a structure must be permanently affixed to land. 57 Fed. Reg. 145,307 (October 1, 1992).

46. See, for example, the Canadian Integrated Circuit Topography Act, §2(1), the Australian Circuits Layout Act, §5, or the United Kingdom Design Right (Semiconductor Topographies) Regulations, §2(1). Japan takes an intermediate approach, permitting the use of a "semiconductor material or insulating material" as the base, but still requiring that structures be "designed to perform an electronic circuitry function." Japanese Semiconductor Layout Act, §(2)(1).

47. Diamond v. Chakrabarty, 447 U.S. 303 (1980): "A live, human-made micro-organism ... constitutes a 'manufacture' or 'composition of matter' within [the Patent Act]."

48. State Street Bank & Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), cert. denied 525 U.S. 1093 (1999).

50. Strictly, the similarity of composition of the various colas might prove relevant as an evidentiary issue in combination with proof in showing theft of a trade secret. For instance, if there was evidence of access to the composition of Merchandise 7X together with evidence that the composition of some competitor cola was nearly identical to that of Coca-Cola, this combination could be relevant in proving theft of the secret.

51. Lear Siegler Inc. v. Ark-Ell Springs Inc., 569, F.2d 286, 288 (5th Cir. 1978); Learning Curve Toys Inc. v. PlayWood Toys Inc., 2003 U.S. App. LEXIS 16847 (Aug. 18).

52. Publicly traded companies are subject to a variety of different disclosure requirements that prevent them from maintaining certain kinds of financial information as a trade secret. Private companies are generally not subject to such requirements and may permissibly maintain all financial information as a trade secret.

53. I admit that this example is somewhat contrived. First, in expressing the requirement that the secrecy of the information must provide an economic benefit, statutes generously give credit to potential economic benefits in addition to actual economic benefits. The Uniform Trade Secrets Act is illustrative as defining a trade secret as something that "derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use." In the example in the text, the patent covering NanoD's product will eventually expire, at which point the secrecy of the synthesis technique will have actual economic value. It thus seems that the secrecy of the technique always has potential economic value. Indeed, it is difficult to concoct a scenario in which information has some intrinsic economic benefit but its secrecy is valueless. I am unaware of any case to have elucidated the circumstances under which that might be the case, but the distinction nevertheless persists in most trade-secret statutes.

54. U.S. Pat. No. 6,093,302 and U.S. Pat. No. 6,280,595.

55. Nanogen press release dated December 19, 2002.

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