Foresight Update 19

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A publication of the Foresight Institute

Foresight Update 19 - Table of Contents | Page1 | Page2 | Page3 | Page4 | Page5


Law in Technology

by Elizabeth Enayati

Elizabeth Enyati, an attorney with Fenwick & West, answers Foresight members' questions on intellectual property issues in nanotechnology.

Firstly, thank you to all who took the time to send letters and e-mail messages with your intellectual property questions and comments. The questions were challenging and the comments were thought-provoking. I will try to respond in kind.

One reader asks, "What situation does a researcher face when he/she wants to publish a paper that may contain potentially valuable intellectual property rights? Does such a publication preclude a general conceptual patent, putting the concept of such devices in the public domain? How does a researcher honestly share results without `giving away the store'?"

These questions raise several complex issues. This conflict between publishing and protecting typically arises in a university context, in which scientists have a professional need to publish their works as soon as possible. The increasing trend among universities today is to aggressively protect intellectual property rights under the patent laws, since such patents often lead to a valuable source of income. Most corporations that have a research division require their employees to obtain pre-publication approval from the patent department. Universities slowly are beginning to follow this trend. Thus, the short answer to the above question is that a patent should be filed prior to publication, whenever possible.

Notice the "whenever possible" caveat? That refers not only to filing prior to the publication date (publication also referring to presentation at conferences), but also refers to having sufficient data to support a patent filing. This is another instance of the realities of business being slightly out of step with legal requirements. A patent application must contain a description of the claimed invention sufficient to enable someone skilled in the relevant art to practice the invention. Thus, if the anticipated disclosure is of a broad concept, and its specific implementation is not yet known or understood, then it may not be possible to file a patent application since the statutory requirements cannot be met.

Furthermore, the requirements for patentability include novelty (i.e., never been published or publicly disclosed) and nonobviousness (i.e., the invention is more than an obvious step over what has previously been done). If a general concept is disclosed, and the subsequent invention is a specific implementation of that concept, the novelty requirement may be satisfied, but the nonobviousness requirement may be a significant obstacle.

What to do? Research scientists who believe they may have a patentable invention, or who believe that their novel concept may be valuable and potentially patentable, should at least meet with a patent attorney to discuss the various options available at the time. Factors in the decision may include remaining time to publication, commercial potential versus a need to publish, and the sufficiency of available data/information.

The question is not an easy one and, as such, neither is the answer. It is clear that a scientist, or any other inventor, facing publication must evaluate the available options. Those options include publishing without filing an application, filing an application prior to publication, or editing the published material to remove reference to the potentially inventive material. Obviously, if the subject of the publication solely consists of the concept, then editing is not an option.

Although there is not enough space in this column to discuss this issue in the detail to which it deserves, it is worth noting that the U.S. Patent Office is in a state of transition with respect to patentability of both software and biotechnology-related inventions. There seems to be much soul-searching as to what properly is patentable in the grey areas of software and new technologies. The result is that there presently is a degree of uncertainty and unpredictability as to what is patentable and, even if a patent issues, what is enforceable.

Another reader makes the observation that, "intellectual property is becoming the linchpin to the entire western economic model. But, as time goes by, information transfer accelerates and the proprietary advantages that companies enjoy become briefer and briefer. And the means of copying information is becoming cheaper all the time."

To paraphrase the remainder of that message, and as a tie-in to the above discussion, as intellectual property protection becomes more uncertain, how does a company compete in the marketplace? Restated, if there are no effective barriers to entry into a marketplace, what is the incentive to enter that marketplace at all? Is the logical result that innovative technologies will not be developed, since it appears that the trend in intellectual property protection laws now seems to lead toward greater uncertainty as opposed to greater certainty, especially for the most leading-edge technologies?

Well, the good news is that we are moving toward more certainty. In the copyright arena, protection afforded to the output of software under the nebulous, catch-all "look and feel" doctrine has significantly been eroded. Companies still have strong copyright protection against copying of their software code, but the results of that code are analyzed under traditional copyright analysis instead of under a broadening doctrine.

Companies had started relying more on patent protection for software over the past few years as they saw copyright protection narrowing in scope. The patentability of software has been publicly questioned by Commissioner Lehman, and effectively has been confirmed. The U.S. Patent Office and the courts now are engaged in a two-step as they determine the form by which software may be patented. Much of the present discussion and uncertainty surrounding software patents revolves around how the software invention is described and claimed.

As a side-note, the trend is toward a more complete description and a more direct correlation between the software and hardware elements. Broad claim language, such as "means plus function" language, is being challenged, and the scope of that language significantly narrowed. However, patent protection is available for software products. How to claim leading-edge technology, including software, remains a challenge.

Next issue, we will discuss the patentability of nanomachines. Should such machines be treated as biological materials, as machines, as chemical structures, or as some new entity under the patent laws? Recall that inventions must fall under one of the statutorily defined subject matters: process; machine, article of manufacture; or composition of matter. Although there is no statutory requirement that each subject matter be treated differently in the Patent Office, the type of examination and the disclosure requirements for each type of invention tend to differ. Of course, inherent in every discussion on intellectual property protection is the question whether the invention should be patented. I look forward to comments on the matter.

[Note: The material contained herein is not intended as nor should be construed as legal advice or opinion.]

© 1994 E. Enayati

Elizabeth F. Enayati, Esq., Fenwick & West, Two Palo Alto Square, Suite 500, Palo Alto, CA 94306; (415) 858-7172 direct; (415) 494-8022 fax; (internet).

Foresight Update 19 - Table of Contents



Mitchell Waite of Waite Group Press, a Senior Associate, has made an especially creative and useful donation to Foresight: 500 copies of his publishing house's book Nanotechnology Playhouse: Building Machines from Atoms, written by long-time Foresight member Christopher Lampton. Waite Group is also the publisher of the popular Virtual Reality Playhouse.

Thanks to those who are helping Foresight get a higher-level presence on the Internet: Chris Allen, Keith Farrar, Josh Hall, and others giving us advice and technical assistance.

Special thanks to members who send in nanotechnology-related articles they run across in their reading. We can't repeat this often enough: do continue to send these, even if you think we must have seen them. We generally receive only one copy of an article, no matter how well known the publication. Statistically, this means we are missing some, as we occasionally find out months or years later. So please follow the example of these members and send in those articles: Ray Alden, Jon Alexandr, Col. John Burke, Thomas Court, Don Fears, Loree Fears, Michael Forbes, Dave Forrest, Frank Glover, William Hale, G. Houston, M.-L. Kagan, Joy Martin, Raymond McCauley, Leonard Micko, John Powers, Mark Reiners, Carol Shaw, Jeffrey Soreff, Gail Taylor, Loronzo Thomson, and Jim Wolcott.

—Chris Peterson

Foresight Update 19 - Table of Contents


Upcoming Events

International Conference on Molecular Electronics and Biocomputing, Sept. 25-30, 1994, Goa, India. International Society for Molecular Electronics and Biocomputing. Biomimetic, supramolecular, self-assembly processes; proximal probes (STM, AFM); molecular sensors; nanomanipulation. Dr. R. Phadke, fax +91-22-215-2110, email

Senior Associates Gathering: Working Toward Nanotechnology, Oct. 21-23, 1994, Los Altos, CA. Small, intense meeting for Senior Associates of Foresight, IMM, and CCIT. Speakers Eric Drexler, Ralph Merkle, Ted Kaehler, Jim Bennett, Gayle Pergamit, Chris Peterson; group discussion; individual meetings with speakers. To become a Senior Associate or register, contact Foresight, tel 650-917-1122, fax 650-917-1123, email

NANO3: American Vacuum Society's Third International Conference on Nanometer-Scale Science and Technology, Oct. 24-28, 1994, Denver, CO. See article in this issue. Angela Mulligan, AVS, tel 212-248-0200, fax 212-248-0245, email

4th Foresight Conference on Molecular Nanotechnology & Molecular Manufacturing, Nov. 8-11, 1995 (not 1994), Palo Alto, CA. Enabling science and technologies, molecular components, systems design, R&D strategies. Foresight Institute, tel 650-917-1122, fax 650-917-1123, email

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From Foresight Update 19, originally published 15 September 1994.