This proposal was received in response to Nanoscale Science and Engineering initiative, NSF 04-043, category NER. It addresses the societal concerns and legal concerns raised by patents involving nanotechnology. The possibility of obtaining patent rights provides an incentive for academic researchers, government researchers, and companies for innovation in nanotechnology, just as pharmaceuticals have been developed because of a similar incentive. Yet nanotechnologies raise issues for the U.S. Patent and Trademark Office (PTO) and its international counterparts, which this project will explore. Some of those issues are analogous to those encountered by any dramatically new technology for which patent protection is sought. Other issues are unique, however, because of the extraordinary characteristics of nanotechnology. Just as there may be problems in the scientific development of a technology, there may be problems in the legal system's response to that technology. The purpose of this project is to identify existing problems with the patent system's response to nanotechnology, predict future problems, and offer policy solutions. The project will consist of (1) legal analyses of patent statutes, treaties, and court decisions that apply to nanotechnologies; (2) legal and social analyses of problems that have previously occurred in the application of patent policies to other new technologies (such as computer programs and patents on genetic technologies) and predictions of whether those problems are likely to occur with nanotechnologies; (3) identification of unique problems that nanotechnology will create for the patent system (such as whether a nano-version of an existing substance satisfies the patent requirement of novelty); and (4) analyses of potential policy solutions. This year-long project will be the first comprehensive analysis of the application of patent policy to nanotechnology. Thus, it will provide a significant advance over the existing literature and its results will be of interest and educational value to scientific researchers, businesses, lawyers, academics, judges, policymakers, legislators, and others involved in this field. A senior and junior legal scholar, and two graduate students will undertake the research and present the findings. Thus, this proposed project meets the goals of the program involving "Societal and Educational Implications of Scientific and Technological Advances on the Nanoscale."
