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2 Nanotech. L. & Bus. 238 (2005)
Nanotechnology and the Best Mode

handle is hein.journals/nantechlb2 and id is 244 raw text is: Nanotechnology and the Best Mode MATTHEW J. DOWD*, NANCY J. LEITH** and JEFFREY S. WEAVER*** ABSTRACT The number of nanotechnology-related patent applications beingfiled with the Patent & Trademark Office (PTO') has steadily increased over the last few years-a trend that is certain to continue. One Jctor driving this trend is the need ibr nanotechnology start up companies to present a vibrant patent portfolio in order to attract much needed investment dollars. Associated with this increased patent activity, patent practitioners are faced with the challenge of certpting that such inventions comply with the traditional patentability standards. In this article, Matthew J. Dowd, Nancy J Leith and Jeffrey S. Weaver address the particular challenge of ensuring a nanotechnology invention s compliance with the best mode requirement of Section 112 of the Patent Statute. Following a detailed discussion of the best mode requirement in light of Federal Circuit precedent, Dowd, Leith and Weaver outline several helpful suggestions that may benefit the patent practitioner in prosecuting nanotechnology applications with an e e toward avoiding allegations of best mode violations should the patent be later litigated. Important considerations are included regarding the best mode requirement and due diligence investigations, and the pros and cons of trade secret protection Jbr nanotechnology inventions are briefly discussed. INTRODUCTION bout thirty years ago, the new kid on the block was biotechnology. Running alongside was the computer revolution. More recently, business method inventions were the rage. £Currently, nanotechnology is taking center stage in the intellectual property arena.' Like each of the preceding technologies, nanotechnology will need strong patent protection to garner the investment necessary to get products to market and to entice further invention. Matthew J. Dowd is a registered patent agent at Sterne, Kessler, Goldstein & Fox P.L.L.C. and a J.D. student at The George Washington University Law School. He can be reached at rndowd@skgf com. This article reflects the present thoughts of the authors and should not be attributed to Steme, Kessler, Goldstein & Fox P.L.L.C. or any of its former, current or future clients. ** Nancy J. Leith is a former patent examiner at the U.S. PTO in the area of biotechnology and is currently a registered patent agent at Sterne, Kessler, Goldstein & Fox P.L.L.C. She can be reached at nleithu skgf.com. *** Jeffrey S. Weaver is an associate at Steme, Kessler, Goldstein & Fox P.L.L.C. He can be reached at jweaverdskgf.com. See generally Albert P. Halluin & Lorelei P. Westin, Nanotechnology: The Importance of Intellectual Property Rights in an Emerging Technology, 86 J. PAT. & TRADEMARK OFF. SoCY 220 (2004). NANOTECHNOLOGY LAW & BUSINESS - Volume 2 No. 3

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