Nano Science and Technology Institute

USPTO Poised to Ring in a New Era of Simplified Search and Better Visibility for Nano Patents

Happy New Year, courtesy of the U.S. Patent and Trademarks Office!

USPTO is only weeks away from publishing its long-awaited cross-reference classifications for nanotechnology — a document that will drastically improve how inventors, researchers, patent attorneys, and even investors access nano-related USTPO documents.

The USPTO’s work brings an expanded classification schedule for its cross-reference art collection (XRAC) of Nanotechnology, Class 977. The result will be that USPTO’s nano-related documents will have 263 new subclasses (or categories) to be filed in and organized under, compared to only one massive subclass at present for nano-related documents.

In August 2004, the USPTO created an art collection of Nanotechnology ‘Class 977’ created in response to the desire to gather in one place all published US Patents and US PreGrant Publications (US PGPUBs) that claim subject matter related to nanotechnology. But, at that time, USPTO had assigned Class 977 only a single subclass, called Digest 1. The new list of 263 subclasses will replace Digest 1.

“Simply creating a single digest within a new class [Class 977] for nanotechnology was just the first step for where we wanted to be,” explained Mr. Richard Elms, Supervisory Patent Examiner, who worked closely on the development of the expanded nano cross-reference subclasses. “First, we had to establish a definition for what we considered nanotechnology related for purposes of searching for, identifying, and classifying documents within Class 977. We looked at several definitions that existed at that time, including those offered by NNI [National Nanotechnology Initiative; see] and by other Patent Offices around the world,” Elms said. *** (See the definition for “nanostructure” that appears at the end of this article.)

“I liken what we did [with the Class 977] to going grocery shopping. Class 977, Digest 1, provided us with a grocery bag, and we had to shop for the nanotech U.S. Patents and PGPUBs, but we still needed to put the groceries [nanotech Patents and PGPUBs] away into either the freezer, the refrigerator, or the pantry, and then determine which shelf to place them on. Now, with this document, we have the shelves, and things will get much easier for many [nano professionals],” Elms said. “Essentially, Digest 1, like the grocery bag, is discarded.”

Benefits From USPTO’s Nano Cross-References

Improvement 1 — Searching of nanotechnology-related documents will get much easier.

“Prior to Class 977, the way our [USPTO] classification system was set up, the application would come in and we did not have a specific class dedicated to nanotech,” Elms said. Class 977, Digest 1, enabled the USPTO to capture what was – and what was not – nanotech in the form of a cross-reference placed in Class 977. It made it easier to locate nano-related documents at the USPTO.

In addition, prior to Class 977, nano-related patent application filings could have been assigned to any one of eight USPTO technology centers (covering biotechnical, chemical, electrical, or mechanical disciplines) based on the claimed subject matter. A survey conducted by the USPTO in August 2004 suggested that approximately 1100 U.S. Patents existed at that time that could be considered nanotechnology-related based on our evolving definition for Class 977. A search of the prefix “nano” at that time would return tens of thousands of US Patents “hits,” many of which, when reviewed, actually had nothing to do with nanotechnology as we were defining it.

Improvement 2 — Centralizing the collection of nano-related U.S. patents and published pre-grant patent applications across multiple technology centers will now be possible.

The fact that nano-related U.S. Patents and PGPUBs could be classified in any of the numerous classes assigned to any one of the USPTO’s technology centers has presented a “challenge” when searching nano-related art, Elms said, to the public and to USPTO staff. During the creation of Class 977, Elms and others at the USPTO had to search across the USPTO’s eight technology centers – and thousands of documents – to gather all nano-related U.S. patents, and U.S. PreGrant Publications in one location.

“We’ve been in ‘real-time’ mode for quite a while now,” Elms told NWN. “Not only have we been reviewing thousands of published U.S. Patents and PreGrant Publications from all our technology centers, and determining which are nanotech related and which shelf they belong on, but, we’ve also been trying to identify them [U.S. patent applications] as they come in the door prior to their publication or patent grant for inclusion in Class 977 as appropriate.”

Improvement 3 — Preparing for the development of an even more comprehensive cross-reference formal “art collection classification” schedule for nanotechnology.

Looking for nano-related documents meant more than simply searching the existing database of U.S. Patents and PreGrant Publications for terms that begin with “nano,” Elms said. “We needed to figure out what other nanotechnology-related terms [nano] inventors were using, and so we reached out to each of our technology centers and classification office to assemble a team of approximately 25 patent professionals to do a brainstorming, if you will. The goal was to come up with as many nanotechnology-related terms that might be used for purposes of searching our database to identify what published nanotech publications we had. Terms like ‘buckyball:’ the USPTO ‘task force’ came up with about 150 of these nano-related search terms and in 2004 estimated approximately 1100 nanotech U.S. Patents existed at that time.”

But one of the biggest challenges, Elms added, was to not just build a glossary of catch phrases. Rather, USPTO wanted to use these terms as a first step “to help us gather a big picture of where the [nano] trends were going and then try to capture those concepts in this collection [Class 977].”

To make this leap from ‘search term’ to ‘significant trend’ the USPTO expanded its groupthink approach, inviting the public to a series of Nanotech Partnership Meetings.

The NWN here provides an example of the expanded subclasses that will replace Digest 1 in Class 977, Nanotechnology. This example comes directly from the USPTO’s Classification Order 1850.

— modified by chemical, biological or mechanical agents. Formed along or from crystallographic terraces or ridges With specified packing density
With specified cross-sectional profile (e g, belt-shaped, etc Bent wire (i.e., having nonlinear longitudinal axis)
Mesh structure

Formed with nucleic acid
Formed with polyamide polymers
Nano-rings — Formed from circular biomolecule (e g, DNA, heme, chelators, etc.)

Virus-based particle
Containing biological material in its interior
Containing nucleic acid
Containing drug
With exterior chemical attachment
Exterior attachment for detection
Exterior attachment for targeting (e g, for drug targeting, etc.)

Electrically conducting, semi-conducting, or semi-insulating, or host material
Electrically insulating host material

Fluidic host/matrix containing
Viscous fluid host/matrix containing
Specified organic or carbon-based composition (as arrays or heterogeneous nanostructures)

Having specified properties (elastic-constant, thermal expansion coefficient, etc.)
Thermal property (e g, thermally conducting/insulating or exhibiting Peltier, Seebeck effect, etc
Optical properties (e g, specified transparency, opacity, index of refraction, etc.)

MATHEMATICAL ALGORITHMS, (Adapted for modeling configurations)

NANOPROCESSES for manufacture or treatment

* Medical, immunological, body
Treatment, or diagnosis
Specially adapted for travel through blood circulatory system
Drug delivery
Mechanical repair performed/ surgical
Obstruction removal
Strengthening cell or tissue
Cancer cell destruction
Cell repair
Stem cell therapy implantation
Protein engineering
Gene therapy
Cosmetic, sunscreen

* Substance Detection
Of biochemical
Of toxic chemical
Of explosive material

USPTO Benefits, Public Tour

“Our meetings were a forum for us to invite the public, and especially external [USPTO] customers, to partake in an exchange with us on nano-related topics,” Elms told NWN. “We invited a pretty broad cross-section, including inventors, applicants, attorneys and assignees and representatives from other Patent Offices around the world.”

Has it been worth all the effort? “They’ve been great, and we’ve received a lot of excellent feedback [on Class 977],” Elms quickly responded. Much of this feedback went directly into refining the USPTO’s nano cross-reference documents that are soon to be released.

Even though the work to define 977’s nano subclasses took nearly 2 years to complete, Elms said that it was worth the extra effort and time that the office invested in creating Class 977. “I am very happy the schedule is very comprehensive rather than limited and broad,” he told NWN. “The work provides the foundation for us to have an extensive prior art collection and classification schedule for nanotechnology, which I believe will provide the nanotech community with a useful nanotechnology cross-reference search tool for years and years to come.”

And there may even be one more day-to-day benefit: While Elms can’t say whether or not the work also signals that USPTO is about to assign the examination of nano-related patent applications to a dedicated examination staff, he did say that the cross-referencing will make it more efficient for USPTO examiners to do their prior art searches for nanotech-related patent applications. “This work is going to help us a lot internally, just in terms of giving an examiner an initial point to begin a prior art search in nanotechnology.”

The public can access the images and text of US Patents and US Published PreGrant Applications at the following URL:

*** The term “nanostructure” is defined to mean an atomic, molecular, or macromolecular structure that:

  • Has at least one physical dimension of approximately 1 – 100 nanometers; and
  • Possesses a special property, provides a special function, or produces a special effect that is uniquely attributable to the structure’s nanoscale physical size.
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