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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
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.
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
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).


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