Types of IP Protection

The U.S. Constitution, statutes, and common law provide protection for intellectual property rights through patent, trademark, copyright, and trade secret law. For many early-stage companies, patents and trade secrets will be predominantly used in the protection of their IP assets. However, in many instances, and depending on the circumstance, trademarks and copyrights can also act to enhance the value of the IP assets.

Patents

In the United States, patents (that is, utility patents) offer protection for inventions that are directed to an apparatus, a concept, or a method or process that is novel, useful, and nonobvious. It is a contract between the inventor and the government (the U.S. Patent and Trademark Office, or USPTO, also called the Patent Office), whereby the inventor agrees to disclose the invention to the public, and in return, the USPTO grants exclusivity in the invention to the inventor if the invention is deemed new, useful, and not obvious. This exchange is seen as helpful in developing the technological knowledge base that is available to the public, while promoting the sciences and technologies.

In general, a patent does not grant to the owner the right to practice the invention. Rather, a patent provides negative rights, in that it grants to the patent owner the right to exclude others from making, using, selling, offering for sale, or importing the invention. With the recent change in U.S. patent law, the enforceable term of a patent now expires 20 years from the priority date of the patent application from which the patent issues.

Often, after one obtains patents in any technological field, it is essential to then engineer and tune the patents to create a substantially strong and solid portfolio to maximize the return from the patent assets. In other words, the portfolio should minimize the gaps that competitors can design around. The challenge of creating a strong and solid portfolio is equally applicable in the field of nanotechnology.

Protecting a new nanotechnology-related invention can be a difficult process, especially when the resources are simply not available at the early stages to pursue patent protection. Moreover, because nanotechnology is an emerging field, protecting the invention requires a level of knowledge and technical expertise that may be lacking.

Furthermore, some new ideas simply cannot be patented because they do not rise to the level of being novel or being nonobvious. For nanotechnology-related inventions, there can be substantial overlap with existing technology except that the nanotechnology-related inventions involve subject matter on a substantially smaller scale. Other nanotechnology-related ideas may be eligible only for narrow or partial protection from potential competition and imitation. Even if minimal protection can be obtained, such pursuit can often be expensive and time-consuming, with the ultimate result remaining uncertain.

A decision to seek protection for a new nanotechnology-related product or process should therefore be approached with the careful consideration that one brings to other commercial transactions. Just because a new nanotechnologyrelated product or process may be eligible for patent protection does not necessarily mean that the cost of obtaining and preserving such protection is justified from a business viewpoint. Patent protection is viewed as one part of the successful marketing equation. Before pursuing patent protection, one should consider a few statutory requirements and strategic points.

Trade Secrets

In addition to patents, a nanotechnology company can also use trade secrets to protect its proprietary information and intellectual property. A trade secret, in general, is confidential business, technical, or other information that gives a company a competitive advantage over its rivals. A trade secret need not be novel and requires no formal filing procedure for protection. Its duration can be indefinite, as long as reasonable efforts are made to keep the information secret. If, however, the trade secret is publicly disclosed or is reverse-engineered by a competitor, legal protection of the trade secret is destroyed.

For a nanotechnology-related invention, because of the nature, science, and scale of the technology at issue, it may be difficult to reverse-engineer the nanoscale technology when compared with traditional technology. To ensure maintenance of the trade secret, a company should pay close attention to its activities externally as well as internally. For example, companies should consider using a nondisclosure agreement (NDA) when exploring a potential partnership, collaboration, or investment opportunity.

In addition, because of the potential for high employee movement in this field, a nanotechnology company should consider instituting a companywide protocol for maintaining the confidentiality of proprietary information. For example, a nanotechnology company can educate its employees on the importance of maintaining confidentiality, can mark proprietary or appropriate information "Confidential," and can inform departing employees of their obligation to keep such information confidential.

Trademarks

Another strategy for protecting intellectual property rights is through the use of trademarks. Generally, trademark rights protect the name or symbol associated with the company in relation to its commercial products or services. The rights afforded to a trademark prevent others from using similar, confusing names or symbols that may take advantage of the goodwill and quality associated with the protected names and symbols. Trademarks can have unlimited duration, as long as the mark is renewed at the appropriate time and is commercially used continuously.

As more companies begin to position themselves to take advantage of the opportunities in the field of nanotechnology, there has been an increasing trend to register, as a trademark, names that include the word nano. A brief check of the trademark database at the U.S. Patent and Trademark Office reveals that, at the end of 2004, there are more than 1,600 such registered and pending marks.

Copyrights

Copyrights protect the original expression of an idea, as opposed to patents, which protect the idea. Protection under copyrights attaches immediately when the idea is fixed in a tangible medium, such as paper, compact disc, or hard drive. Copyrights can offer protection for as long as 75 to 100 years for work made for hire, which is generally the case in the field of nanotechnology.