Douglas Oguss

Legal Issues of the 21st Century
Prof. Friedman

Patent Problems Pending: A Critical Look at Patent Law in the 21st Century

  1. Introduction

The evolution of United States patent law over the past two centuries may appear relatively quiescent after the 21st century comes to an end. In a historical context, Article I, Section 8 of the Constitution provided the foundation for patent law, stating that “The Congress shall have the power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” The Patent Act of 1790 authorized the issuance of patents for “any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used.”[1] In 1850, the Supreme Court in Hotchkiss v. Greenwood[2] established an additional requirement for patentability that eventually became known as the nonobviousness requirement.[3] Two decades later, the 1870 Act required the patent applicant to define the invention more distinctly, placing a heavier emphasis on the claims.[4]
In the late 1940s, Congress put together committees to develop United States Code Title 35, which provides a comprehensive body of law devoted exclusively to patents. A few decades after Title 35 was enacted, The Federal Circuit Court of Appeals was formed in 1982. Essentially, every appeal relating to a patent matter goes to that one circuit, thereby promoting uniformity in judgments of validity and infringement. Since the founding of the Federal Circuit Court of Appeals, patent law has become organized into a fairly well understood body of law.
However, with recent advancements in technology, and the numerous advancements that could potentially be made during the 21st century, several novel patent law issues will be raised. Existing patent laws may be able to deal with the some technological advancements effectively, while the law will likely have to adapt to other innovations. The discussions hereinbelow strive to address various patent law issues that may arise during the 21st century and how our legal system can cope with such scenarios.

  1. The Proliferation of Prior Art on the Internet

  1. Finding a Needle in the Haystack: The “Available to the Public” Requirement

Historically, relatively few pieces of information could qualify as “prior art” to block an inventor from patenting his invention. After the enactment of Title 35 in 1952, items or acts that could qualify as prior art for the purpose of anticipating or rending an invention obvious included, inter alia, patents and printed publications existing anywhere in the world before the date of an applicant’s invention[5], and public uses and offers for sale of the invention in the United States more than one year prior to filing of a patent application.[6]
Perhaps the most important prior art revolution in modern patent law comes with the rapidly growing popularity of the Internet. Before the Internet, a publication had to be both published and “available to the public” to serve as prior art[7], thereby generally limiting “printed publications” to magazines, articles or other printed documents that the public could reasonably access.
Since the term “available to the public” is somewhat subjective, various courts have interpreted the meaning of this prerequisite for printed publications. For example, the court in In re Cronyn[8] held that school papers, written by undergraduates and filed in a library without a catalogue or index, could not serve as prior art. Even though the physical documents existed in a public place, the papers were not readily accessible to the public.
In the 21st century, the prior art publications that are “readily accessible to the public” will change dramatically. Nowadays, it seems that virtually everything that has ever been written has been uploaded into cyberspace. Theoretically, the Internet has furnished billions of additional pieces of prior art that had not necessarily existed during the 20th century.
Very little, if any, case law appears to exist concerning whether all Internet references serve as prior art, or just those “readily available to the public.” Clearly, if dozens of popular webpages disclose an invention, then an inventor should be barred from receiving patent protection based on 35 U.S.C. 102(a) or 35 U.S.C. 102(b), since the reference is readily available to the public.
A more complicated scenario will occur in the future, however, when the invention has only been disclosed on one relatively obscure webpage. As an example, assume that an invention is disclosed on a webpage that originates in Chile and is only available in Spanish. Further, assume that an American inventor independently conceives of the same invention. The American inventor, believing his invention is new, performs an Internet search for prior art, in good faith, to make sure nothing else is out there. GoogleTM lists the Chilean webpage as page number 6,400 out of 2 million “relevant” pages.
It is unclear whether such scenario has been litigated, but if not, it will almost certainly arise in the near future. Courts may have a difficult time determining whether the Chilean reference was “available to the public,” based on Cronyn, to bar the American inventor from obtaining patent protection. Courts may need to factor in how many webpages a reasonable person would search through, and whether they should go through the hassle of translating the reference, before precluding the American inventor from patenting the same invention disclosed on the Chilean webpage.
Public policy may suggest that patent law should favor the inventor, who conceived of the invention independently and without viewing the Chilean webpage. In most cases, the applicant will have spent thousands of dollars, and countless hours, pursuing an invention he believed was novel, in good faith, and after reviewing the first 2,000 webpages provided by GoogleTM. Where such cases of good faith exist, courts may use the Cronyn rationale to reward the inventor with patent protection in the United States.
Alternatively, future court decisions may opt for a bright-line rule that bars all inventions that had previously been disclosed anywhere on the Internet and in any language. Such a bright-line rule would facilitate litigation, as the court could more consistently interpret the phrase “readily available to the public.” In any event, the pool of prior art will continue to expand dramatically in the upcoming decades, and the courts will have to decide when such “needle in the haystack” references should qualify as prior art.

  1. Inoperative, Hypothetical Prior Art

In addition to the problems associated with merely locating prior art on the Internet, issues may arise as to whether inoperative, hypothetical inventions disclosed on the Internet can qualify as prior art. For example, assume that a patent law professor, administering a final exam in the year 2000, discloses a hypothetical invention directed to a commercial spaceship for transporting humans between the Earth and Mars. After grading, the exam becomes “available to the public” via the Internet. A question may arise as to whether such “science fiction” can qualify as prior art to a patent application filed in 2056, which is directed to a similar, yet fully enabled, commercial spaceship.
Multiple cases have held that an inoperative invention can qualify as prior art under 35 U.S.C. 103 (obviousness), but not 35 U.S.C. 102 (anticipation). In Symbol Technologies, Inc. v. Opticon, Inc.[9], the court held that “While a reference must enable someone to practice the invention in order to anticipate under Section 102(b), a non-enabling reference may qualify as prior art for the purpose of determining obviousness under Section 103.[10] Recently, in Amgen, Inc. v. Hoechst Marion Roussel, Inc.[11], the court reiterated the Symbol holding, stating that “Under Section 103, however, a reference need not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed therein.”[12]
The Symbol and Amgen cases make it clear that the disclosure of inoperative inventions qualify as obviousness-based prior art for whatever they in fact teach, even if the references are not enabling. Applying this rationale to the example above, the law professor’s exam question, even though farfetched in the year 2000 when it is administered and uploaded to the Internet, may qualify as 35 U.S.C. 103 prior art in the year 2056. Further, virtually all ideas that appear to be “science fiction” when created ultimately may serve as prior art, if disclosed on the Internet or otherwise made available to the public. Importantly, since the subsequent inventor still must make nonobvious improvements over the broad “science fiction” concept, patent law procedural safeguards will remain in place to reward only those meritorious advancements in technology.

  1. That Would Have Been Obvious To My Supercomputer

  1. The Current Obviousness Standard

An important requirement for obtaining patent protection under current patent law is meeting the “nonobviousness” requirement. 35 U.S.C. 103(a) provides that “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102..., if the difference between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which such subject matter pertains. Patentability shall not be negatived by the manner for which the invention was made.”
A leading case regarding obviousness is Graham v. John Deere Co.[13] In Graham, the Supreme Court held that the following three factual inquiries should be used for determining obviousness/nonobviousness of the subject matter: 1) Scope and content of the prior art; 2) differences between the prior art and the claims at issue; and 3) the level of ordinary skill in the pertinent field.
With respect to the third prong, several factors may be used to determine the level of ordinary skill in the pertinent field. These factors include: the educational level of the inventor; the type of problems encountered in the art; prior art solutions to those problems; the rapidity with which innovations are made; the sophistication of the technology; and the educational level of active workers in the field.[14]
In the 21st century, it may become difficult to ascertain the “level of ordinary skill in the art,” assuming that various technologies for enhancing intelligence come to fruition. Therefore, obviousness determinations under 35 U.S.C. 103(a) may become muddled. The following examples described various means for enhancing intelligence and their potential impact on obviousness in the 21st century.

  1. Artificial Intelligence

In the next few decades, it is possible that a supercomputer may be manufactured that is significantly smarter than human beings. Programming may be implemented that gives the supercomputer access to an enormous range of information, then causes the supercomputer to process those references and combine them together to obtain plausible new inventions. If such a supercomputer is perfected, then it is unclear whether an invention that would have been obvious to a supercomputer, but not a human, should merit patent protection.
If such supercomputers become mainstream, for example, such that many households can afford an artificially intelligent supercomputer, then the case for finding obviousness under 35 U.S.C. 103(a) may be increased. Essentially, many people could have turned to their supercomputers, plugged in a query, and discovered the new invention with ease. Therefore, the new invention would have been obvious to one of ordinary skill in the art, who just happens to have a supercomputer.
However, if such supercomputers do not become mainstream commodities, then the case may be strengthened for finding nonobviousness under 35 U.S.C. 103(a), since average human beings would not have turned to a supercomputer to solve the problem. Similarly, even if everybody has artificially intelligent supercomputers, the Patent Office and courts should likely make a nonobviousness determination where the human enters a nonobvious query or instruction, thereby causing the supercomputer to discover a nonobvious invention.

  1. Mind Drugs

In another scenario, the level of one of ordinary skill in the art may be difficult to ascertain if mind drugs are improved. In the future, certain mind drugs may cause a drastic increase in human intelligence, either permanently or temporarily. An interesting and novel question may therefore arise: What happens if the invention would have been obvious to someone taking performance enhancing mind drugs, but would not have been obvious to an individual using regular brain power?
If the mind drug question is analyzed under current patent law, then it probably should be determined whether the knowledge achieved while using the mind drugs is commensurate to that of a person of ordinary skill in the art. For example, if it becomes common to take mind drugs to solve difficult technical challenges, then patent protection should likely be denied since the “educational level of the inventor” and/or “prior art solutions to those problems” factors, enunciated supra, should be evaluated while the inventor is on the mind drugs. However, if only a few individuals take mind-enhancing drugs, e.g., due to the risks involved, then the Patent Office and courts should likely uphold a finding of a nonobvious invention.

  1. Genetic Engineering

Similarly, in the 21st century, genetic engineering may pose issues relating to the level of ordinary skill in the art. If the wealthiest one percent of families can afford to genetically engineer their children to become brilliant scientists, professors or physicians, then should the level of ordinary skill in the art be measured against that one percent, or measured against the other ninety-nine percent of the population?
As noted above, the current factors relating to ordinary skill in the art consider, inter alia, the “educational level of the inventor” and the “educational level of active workers in the field.” Under such an analysis, if the vast majority of genetically engineered individuals excel as prolific nanotechnology inventors, while very few regular humans can grasp the concept of nanotechnology, then courts should hold that the genetically-engineered individuals are the “active workers” in the field for purposes of the ordinary skill level analysis. Therefore, perhaps counterintuitively, if a regular human came up with what he deemed was a “great nanotechnology idea,” the invention would likely be deemed obvious under current patent law, since the genetically-engineered nanotechnology inventors would be the reference point for ordinary skill in that particular art. While those skilled in the art represent only a small fraction of the population at the present time, it is possible that genetic engineering may widen the gap between those skilled in the art and the general population in the future, assuming that genetic engineering is affordable to only a small percentage of the population.

  1. Conception, Diligence and “Public Use” in a Transparent Society

  1. Current Interpretations of “Public Use”

An important legal requirement for obtaining patent protection in the United States is that an invention is not in “public use” in the United States more than one year prior to the filing of a patent application.[15] A main rationale for this one-year grace period is to allow an inventor to test his product for a short period of time before deciding whether to pursue patent protection. However, after one-year, the inventor must file for patent protection in the United States so that he does not prolong a possible monopoly on his technology.
Since the term “public use” is somewhat subjective, several court decisions have helped interpret what constitutes a public use. In Egbert v. Lippmann[16], the Supreme Court held that when an inventor gave his girlfriend a prototype of his invention, without restricting her use of it, it constituted a public use because she may have told anyone about it. Further, in Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co.[17], the court held that a secret use of the invention was public use because the use was commercial rather than experimental. Accordingly, to escape the public use bar, the utilization of the invention must be private, under the inventor’s control, and not for commercial purposes.
If an inventor can show that the utilization of the invention was for experimental use only, then the inventor does not invoke the public use bar. In City of Elizabeth v. American Nicholson Pavement Company[18], the Supreme Court held that an inventor did not invoke the public use bar when he tested his improved wooden pavement in public because he needed to test viability for its purpose. If a prima facie case is made of public use, then the inventor must be able to come forward with convincing evidence to counter that showing.[19]

  1. The Transparent Society

In the future, it is possible that we will live in a “transparent society” in which surveillance cameras capture most, if not all, of our moves.[20] Such increasing surveillance, whether invading our public or private lives, will have several ramifications on existing patent law, and in particular, the “public use” bar.
With respect to public use, a competitor may argue that an inventor should be barred from receiving a patent because his invention was used “publicly” more than one year before the filing of a patent application. The competitor may claim that he, and others, could see what the inventor was developing because it was shown in surveillance footage. Whether the inventor’s actions qualify as “public use” should be analyzed on a case-by-case basis.
Under existing patent law, the utilization must be private, under the inventor’s control, and not for commercial purposes in order to escape a public use bar, as generally set forth above. In the 21st century, if the inventor knows of the surveillance, and does not take appropriate steps to “hide” his invention, then courts may choose to deny patent protection. Such reckless private use, where the individual knows, or should have known, that he is being watched, will likely qualify as public use based on Egbert, supra, in which the inventor effectively relinquished control of his invention due to failure to supervise others who knew of his invention. If, however, the inventor takes reasonable steps under the circumstances to maintain the privacy of his invention in a transparent society, then his patent rights should be preserved, even though his use of the invention could be viewed more than one year prior to filing.
As an example, if a patentee receives a blockbuster patent in 2030, then patent attorneys may wish to scour through thousands of hours of videotape to find a “public use” one year before the patent application was filed, thereby potentially invalidating his blockbuster patent. The inventor may argue that his prior use should not qualify as “public use” where the footage is only discovered after a lawsuit is initiated. If an inventor is developing an invention more than one year prior to filing, and competitors do not know to perform a surveillance search at that time to find this “public” use, then public policy should favor the inventor. In other words, if it takes the initiation of a high-stakes lawsuit for competitors to scour through hours of surveillance video footage to find a “public use,” then the original development of the invention was sufficiently private.
Questions will likely arise as to whether the opposing attorneys are committing invasions of privacy by searching through countless hours of footage to find public uses of the invention. The judiciary may need to apply a balancing test to determine whether viewing footage in the interest in finding “public use” prior art outweighs any invasions of privacy issues that may arise.
In another scenario, the legal system may need to decide whether surveillance video can be introduced into evidence to help an inventor prove his date of conception, and/or whether he had acted diligently in reducing the invention to practice. Such concrete evidence is likely to facilitate litigation, since many patent litigations hinge on the conception date and/or whether the inventor had acted diligently. Currently, courts rely on certain documentation to deduce conception dates and to establish diligence. Problematically, the documentation may be poor, such that days or weeks may have elapsed between the conception date and first documentation date. Accordingly, 21st century courts should seek to introduce surveillance video into evidence, wherever possible, to establish the exact conception date and to show the inventor acted diligently during the ensuing weeks, absent any countervailing invasion of privacy issues.

  1. Inventorship Issues

  1. Current Inventorship Requirements

Under current patent law, an inventor shall be entitled to a patent “unless he did not himself invent the subject matter sought to be patented.”[21] A party asserting invalidity of a patent based on 35 U.S.C. 102(f) must prove both prior conception of the invention by another and communication of that concept to the patentee.[22]
In the future, with increasing forms of mind drugs and artificial intelligence, patent laws may need to address various muddled inventorship scenarios. Several of the scenarios may hinge on judicial interpretations of the statutory phrase “unless he did not himself invent the subject matter sought to be patented.”

  1. Artificial Intelligence

In the 21st century, it may be possible for a human being to program a computer having an intelligence that is far greater than the human being. Further, it is possible that the human being can write an algorithm that causes the computer to “scan” existing technologies all day in an effort to combine multiple existing technologies into one or more novel inventions. Alternatively, if the computer has its own artificial intelligence, the computer can think of new inventions that the human being who created the computer never could have envisioned.
In such scenarios, the legislative or judiciary branches will need to decide whether the human being should be considered an inventor, thereby receiving the right to license the new inventions and make millions of dollars. One may argue that a narrow interpretation of the phrase “unless he did not himself invent the subject matter sought to be patented” means that the human being is precluded from being an inventor because the computer discovered the invention, not the human being. The human being simply wrote an algorithm, and did not think of the blockbuster cancer drug that the intelligent computer discovered.
Public policy, however, may suggest that the human being that programmed the computer should be deemed an inventor of the new technology that the computer discovers. After all, the human being wrote the algorithm that caused the robot to think intelligently enough to discover the new invention. Further, public policy would likely want to reward human beings that program robots to think of new inventions, since society ultimately will be the beneficiary. If inventors were not rewarded with patent protection, then they may not have an incentive to create intelligent robots that could develop blockbuster medical cures.
In general, if an inventor stumbles across a technological improvement accidentally, then he still is legally entitled to receive patent rights. Therefore, if a programmed computer discovers an unexpected invention, one can reason that the inventor similarly has discovered the invention accidentally, albeit via the supercomputer.
However, if one inventor creates a supercomputer configured to devise millions of new and useful inventions, patent or antitrust laws may need to be enacted to preclude the inventor from receiving the rights to all of the inventions. It might not be fair for one individual to receive two million patents over a span of three years because he developed a prolific supercomputer. If the machine truly takes on a mind of its own, then perhaps the inventions should be donated to society as a matter of public policy, thereby prohibiting one individual from monopolizing virtually all technological avenues.
Ultimately, the determination of whether an artificially intelligent supercomputer can receive patent rights may hinge on the legal status accorded to such machines. If such machines are given legal rights commensurate with human beings, such as the right to self-defense and the right to freedom of speech, then perhaps the machines can be permitted to be inventors, also.

  1. Mind-Enhancing Drugs

Another interesting legal issue may arise when an individual consumes large doses of mind-enhancing drugs. For example, assume that somebody takes mind drugs to make themselves 800% smarter for one week. That individual may conceive of thousands of new and useful inventions during his one-week mind trip, writing down each invention immediately after conception. Once the mind drug wears off, the inventor will have a record of thousands of inventions that he conceived during his mind-enhancing voyage, but probably would not have conceived otherwise.
In the 21st century, should patent laws be enacted to bar such individuals from taking permanent or temporary mind drugs to facilitate conception of new ideas? If there are health hazards associated with such mind drugs, then the government may impose regulations to prevent significant amounts of adventurers from overdosing, much like illicit drugs. However, assuming the mind drugs are legal and pose minimal risks, the government presumably would not regulate such drugs, since they are somewhat analogous to taking herbal supplements to enhance memory or concentration.
Even if mind drugs are risky, the government may not wish to intervene because the benefits to society may outweigh any individual harm to the inventor. For example, it is possible that an indigent with nothing to lose will be commissioned by an engineering company. The company may “employ” the individual for one week, paying him large sums of money to go on a mind-enhancing invention spree. Upon completion of the task, the company is the recipient of thousands of pieces of intellectual property, the previously-indigent individual can provide financial support for his family, and society has benefited by receiving thousands of intellectual property building blocks. This may be analogous to individuals who are commissioned by drug manufacturers to be injected with promising new therapeutic drugs, as each involves risk to the individual but measurable benefits to society. Therefore, in summary, it is unlikely that the government will intervene to prevent inventors from using mind-enhancing drugs, unless the health risks clearly outweigh the significant benefits to society.

  1. Mind-Machine Links

In yet another scenario, legal issues relating to inventorship may arise if mind-machine links become feasible technologies. For example, in the 21st century, an individual may serially or wirelessly upload information from computer software into his brain. The upload may occur at a rate that is hundreds of times faster than conventional information gathering, such as reading or watching an informative program on television.
An inventor who uses mind-machine links to educate himself, thereby becoming a more prolific inventor, would likely be awarded patent protection under existing patent law. Even under a narrow interpretation of 35 U.S.C. 102(f), the machine-enhanced individual still invented the subject matter sought to be patented. The individual simply went through steps to enhance his education, much like reading a book. Further, his own brainpower still must perform an “inventive step” to devise a new, useful and nonobvious invention so that he can be awarded patent protection.
In summary, inventors who use mind drugs or mind-machine links to significantly enhance their intelligence will likely retain their legal status as inventors, despite drastically altered intelligence levels. Traditional patent law safeguards remain unchanged because these individuals still must perform inventive steps in developing their inventions, even though the inventive steps are performed with enhanced intelligence. However, if an individual programs an artificially intelligent supercomputer to conceive of unexpected inventions, then questions may arise as to whether the human being “himself” invented the invention under 35 U.S.C. 102 (f). The legal status of the machine will likely need to be ascertained to determine if it has any legal rights.

  1. The Impact of Nanotechnology on Patent Law

  1. The Basics of Nanotechnology

In the future, if nanotechnology comes to fruition, it will likely have a far-reaching impact on patent law. First, a fundamental understanding of nanotechnology will be useful to understand its potential impact.
All manufactured products are made from atoms, and the properties of those products depend on how the atoms are arranged.[23] In the future, nanotechnology may make it possible to piece together fundamental building blocks of nature easily and inexpensively, thereby permitting the fabrication of an entire new generation of products that are cleaner, stronger, lighter and more precise.[24] Further, nanotechnology may yield new manufacturing technologies that will enable the building of inexpensive computer systems using mole quantities of logic elements that are molecular both in size and precision.[25]
To achieve the goals of nanotechnology, some form of positional assembly and self-replication may be necessary.[26] Positional assembly may employ molecular robotics, such as robotic devices that are used to manipulate and position individual atoms and molecules.[27] Self-replicating systems are capable of making copies of themselves, and also may be used to manufacture useful products.[28] Using concepts such as positional assembly and self-replication, products may be made whereby virtually every atom is in the right place, virtually any structure can be made in molecular detail, and the manufacturing costs of the products may not greatly exceed the cost of the raw materials and energy required.[29]
It is against this backdrop that some of the numerous patent law issues relating to nanotechnology will be analyzed.

  1. Detecting Infringement on a Nanotech Scale

First, the possibility of having microscopic assemblers and replicators could facilitate unauthorized reproduction of patented nanotech products. For example, someone may reproduce an inventor’s patented “angioplasty nanorobot” without permission. The nanorobot may be configured to be ingested, then perform completely internal, coronary artery angioplasties every week. If an individual successfully reproduces and sells the patented nanorobot without authorization, then a patent infringement clearly results. However, it might be difficult or impossible for the patentee to locate the infringing activity, absent enhanced nanotechnology detection devices. It may be necessary for a whistle-blower, such as a co-worker or prospective customer, to inform the proper authorities that one is selling products having infringing nanotech components.
During the 21st century, few new legal issues should be raised when manufacturers make patented nanotech products, without authorization of the patentee or assignee, and within the confines of the United States. This is basic patent infringement, albeit on a smaller scale, and the difficulty will simply be finding the infringing activity in the first place. Several novel legal issues, however, will likely be raised with respect to importation and exportation of products containing nanotech components, as described in the following sections.

  1. Importation of Products Containing Nanotechnology

In general, patent law dictates that a patent is enforceable only in those countries in which the invention was actually patented. Therefore, if an inventor patents an invention in the United States, the inventor has no recourse if the invention is being manufactured and sold at an astounding rate in Japan, assuming a corresponding patent has not issued in Japan.
However, there are a few exceptions to this general rule. For example, with respect to importation, 35 U.S.C. 271(g) provides that “Whoever without authority imports into the United States ... a product which is made by a process patented in the United States shall be liable as an infringer.” Accordingly, manufacturers cannot escape liability by manufacturing an invention in a foreign country, then importing the invention into the United States. A few important exceptions to this rule apply, namely that infringement will not occur if the product is materially changed by subsequent processes before importation, or if the product “becomes a trivial and nonessential component of another product.”[30]
An example will be useful in understanding the 21st century issues that will be raised when products having nanotech components are imported into the United States. Assume that a California corporation is the assignee of a United States patent directed to a process for manufacturing a nanotech-size adhesive. The nanotech adhesive is a key ingredient for manufacturing the above-mentioned “angioplasty nanorobot” on a nanotech scale. Now assume that a Delaware corporation manufactures the nanotech adhesive in China, using the patented process without the permission of the California corporation. Before importation, the nanotech adhesive manufactured without permission ultimately is used in a conventional angioplasty catheter to secure the balloon to the catheter.
Under modern patent law, the Delaware corporation may escape liability for patent infringement when the catheters are imported into the United States and sold here. The determination will hinge on whether the nanotech adhesive has become a “trivial and nonessential component of another product,” i.e., the large, conventional catheter.
An influential judicial interpretation of the phrase “trivial and nonessential component” is set forth by the court in Hughes Aircraft Company v. National Semiconductor Corporation.[31] In that case, Hughes’ parent company, General Motors, argued that the allegedly infringing semiconductors are only a “trivial and nonessential” component of its automobiles.[32] The court held that, although General Motors’ evidence makes it clear that the allegedly infringing semiconductors are only small part of their automobiles, that does not support a finding that they are trivial and nonessential components as a matter of law, particularly in light of the legislative history of 35 U.S.C. 271(g).[33]
With respect to the legislative history of 35 U.S.C. 271(g), the Report of the Senate Judiciary Committee gives a series of examples designed to guide the courts in defining the words “trivial and nonessential.”[34] In one such example, the Committee indicates that if a shock absorber is manufactured using an infringing process, then subsequently incorporated into an automobile, the automobile manufacturer would not be shielded from liability under 35 U.S.C. 271(g) by the “trivial and nonessential” exception.[35]
Based on the Hughes determination, and the examples in the Report of the Senate Judiciary Committee, it appears that companies using patented nanotech processes to make nanotech products in foreign countries will likely be liable for infringement under 35 U.S.C. 271(g) when the nanotech products are placed in larger products, then imported into the United States. This interpretation assumes that a small nanotech component, incorporated into a larger product, will be analogous to a semiconductor or shock absorber incorporated into an automobile.

  1. Exportation of Products Containing Nanotechnology

With respect to exportation, 35 U.S.C. 271(f)(2) provides that “Whoever without authority supplies ... any component of a patented invention that is ... not a staple article..., knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent..., shall be liable as an infringer.” In short, patent infringement occurs when one makes a material, non-staple part in the United States, and then ships the part outside of the country with knowledge that the non-staple part will be used in an infringing product.
An analysis of 35 U.S.C. 271(f)(2) may conclude that existing exportation laws are well-equipped for possible future developments in nanotechnology. With respect to exportation, assume that an inventor has a United States patent directed to the “angioplasty nanorobot.” Further, assume that a nano-size “balloon” is an important component of the angioplasty nanorobot, and the nanotech balloon has no other major uses. If the Delaware corporation ships the nanotech balloon from the United States to Japan, knowing that the balloon will be used to construct an infringing angioplasty nanorobot in Japan, a patent infringement has occurred under 35 U.S.C. 271(f)(2). This is because the nanotech balloon is a material, non-staple component of the patented angioplasty nanorobot, and the corporation knows that infringing activity will occur in Japan once the nanorobot is assembled there.
In summary, it appears that modern patent law, perhaps accidentally, will be well-suited to deal with exportation of nanotech components for manufacture in other countries. Further, modern patent law also appears to be well-equipped to deal with importation of products having components made by nanotech processes, by providing judicial and legislative guidance as to when relatively small components may become “trivial and non-essential components” of a larger product.

  1. Infringement in Outer Space

As noted above, a patent generally is enforceable only in those countries in which the invention was actually patented. In the 21st century, if human beings fly to the Moon, Mars, or simply take a short outer space flight, several unique territorial issues may arise with respect to patent infringement. For example, if an inventor has a United States patent directed to a method for curing cancer, it is unclear what will happen if a United States citizen flies into outer space and has a team of doctors perform the patented treatment method on him. The man will then return to the Earth cancer-free, for example, six hours after surgery. Since all of the infringing acts, i.e., the method steps, technically were performed outside the United States, then it must be determined whether the inventor or assignee has any recourse under current patent law.
Historically, there appears to be a paucity of case law relating not only to infringing acts in outer space, but also on the high seas. A leading case regarding infringement on the high seas is Gardiner v. Howe (1865).[36] Without including facts, the terse opinion held that the use of a patented device on a vessel owned and operated by Americans while on the high seas constituted use “in the United States.” The judgment, based on policy rather than law, reasoned that “Were it to be held that in cases like the present the plaintiff is not entitled to recover, patents for improvements in the tackle and machinery of vessels, or in their construction, would be valueless.”[37]
Before 1990, commentators and courts in dictum considered whether the United States patent law applied to activities aboard vehicles in outer space.[38] In 1990, Congress quelled the speculation by adding 35 U.S.C. 105, entitled “Inventions in outer space.” 35 U.S.C. 105(a) recites, in relevant part: “Any invention made, used, or sold in outer space on a space object or component thereof under the jurisdiction or control of the United States shall be considered made, used or sold within the United States for the purposes of this title....”[39] The statutory exceptions to 35 U.S.C. 105(a) include “any space object or component thereof that is specifically identified and otherwise provided for by an international agreement to which the United States is a party....”[40]
One of the few cases to interpret the “patents in space” law provision of 35 U.S.C. 105(a) is Hughes Aircraft Co. v. United States.[41] The court noted that “The legislative history indicates that the purpose of the law was ‘to clarify U.S. patent law with respect to its extraterritorial application aboard U.S.-flag spacecraft, in order to encourage private investment in research and manufacture conducted in outer space.’... Moreover, the legislative history suggests that the Act was consistent with international law.”[42]
Based on the legislative and judicial interpretations, it appears that any infringing acts in outer space will be covered by the newly-enacted provisions of 35 U.S.C. 105(a), so long as the space object is “under the jurisdiction or control of the United States.” In the example above, the medical team performing the patented method in outer space cannot escape liability under 35 U.S.C. 105(a), assuming the invention is being used on a space object “under the jurisdiction or control of the United States.” It appears that Congress had the foresight to envision such scenarios, which will likely arise in the 21st century, and intends to use 35 U.S.C. 105 as a means for protecting inventors from potential infringing acts that could otherwise seek to circumvent territorial loopholes in outer space.

  1. Inequitable Conduct Made Simple?

  1. The Defense of Inequitable Conduct

An important concept in existing patent law is the patent applicant’s duty of candor to the United States Patent and Trademark Office. This duty was codified in 37 C.F.R. 1.56, which states “Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability.” In short, the applicant must bring to the attention of the Patent Office all known, material references during prosecution of the application.
There are strong sanctions for knowingly withholding material prior art from the Patent Office. Specifically, an entire issued patent will be invalidated if inequitable conduct is proven.[43] Therefore, it is not surprising that when a high-stakes litigation arises, attorneys seek to discover what “material” prior art references were known to an applicant, perhaps 10 or 15 years into the past, in order to invalidate his or her patent on the grounds of inequitable conduct.
Since inequitable conduct requires both materiality and intent, it may be difficult to prove the intent of an individual. For example, assume that an individual invents a new and improved spatula. The inventor can simply submit a patent application directed to the spatula without searching for prior art. Current patent laws require that the inventor merely informs the Patent Office of what he has seen that may be relevant, not to perform an affirmative search to find prior art. If it turns out that an extremely material, prior art spatula existed, it may be difficult to prove whether the inventor had seen the prior art spatula previously, e.g., in stores or online. Therefore, it is difficult to determine if the inventor was knowingly withholding material prior art from the Patent Office, or merely didn’t know of it at all.
At present, one of the best mechanisms for meeting the “intent” requirement for finding inequitable conduct is to realize that the inventor has not disclosed prior art to a first national patent office, when that prior art reference was cited during the prosecution in a second national patent office. For example, assume that the inventor of the spatula prosecutes his invention in the United States and Europe. The European Patent Office examines the application first, and rejects the application based on an issued Japanese patent showing an extremely similar spatula. If the inventor does not bring the Japanese spatula reference cited in Europe to the attention of the United States Patent Office, then inequitable conduct may be found. This is because the cited reference was clearly material and brought to the attention of the inventor in writing during prosecution. As such, an intent to deceive the United States Patent Office can be inferred.

  1. We Know What You Saw

In the 21st century, proving inequitable conduct may become a significantly easier task. Generally, before an inventor pursues patent protection for an invention, the inventor searches for prior art. Such a search is not required, as noted hereinabove, but often is advisable so that the applicant knows what prior art exists before spending large sums of time and money pursuing his invention. Such prior art searches can be performed, e.g., using the United States Patent Office search engine, GoogleTM, and so forth.
In the 21st century, it is possible that all computer activity can be logged into a database. Therefore, it is possible that an attorney can at least prove that an inventor viewed a website having material prior art. If this webpage was not brought to the attention of the Patent Office during prosecution, that attorney may argue that inequitable conduct was present.
Similarly, in a transparent society, as described above, it may be easier to determine whether an inventor viewed pertinent prior art. Surveillance video may make it possible to prove that an inventor saw an advertisement on the television showing his spatula, or that the inventor walked into a store and saw the spatula on sale before he filed his patent application.
While such an activity log or surveillance can be useful for determining whether an inventor viewed prior art, intent must still be proven to invalidate a patent. Simply because the inventor viewed an existing product or disclosure does not mean that he deemed it material to his invention. The inventor of the spatula, believing that his improvement was superior, might have thought that it was unnecessary to disclose an inferior spatula, which he saw on the Internet, to the attention of the Patent Office. However, the mere fact that the inventor viewed prior art is helpful evidence of intent to deceive.

  1. Conclusion

Various technological advancements that may emerge in the 21st Century will likely have a significant impact on existing patent laws. Technologies such as artificial intelligence, mind drugs, nanotechnology and surveillance, to name a few, may dramatically affect what is considered obvious, or may raise several new issues regarding inventorship. The emerging technologies may provide useful knowledge for brainstorming new inventions, or may be used as tools to invalidate a blockbuster patent during a high-stakes litigation. Finally, assuming this paper is published to the extent that it meets the “available to the public” requirement described above, please be forewarned that this paper may serve as prior art for anyone seeking patent protection directed to an angioplasty nanorobot.

[1] Donald S. Chisum et al., Principles of Patent Law, Foundation Press, 18 (2001).
[2] Hotchkiss v. Greenwood, 52 U.S. 248 (1850).
[3] Donald S. Chisum et al., Principles of Patent Law, Foundation Press, 20 (2001).
[4] Id. at 21.
[5] 35 U.S.C. 102(a).
[6] 35 U.S.C. 102(b).
[7] Donald S. Chisum et al., Principles of Patent Law, Foundation Press, 430-431 (2001).
[8] In re Cronyn, 890 F.2d 1158 (1989).
[9] Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569 (1991).
[10] Id. at 1578.
[11] Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (2003).
[12] Id. at 1357.
[13] Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966).
[14] Donald S. Chisum et al., Principles of Patent Law, Foundation Press, 598 (2001).
[15] 35 U.S.C. 102(b).
[16] Egbert v. Lippmann, 104 U.S. 333 (1882).
[17] Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (1946).
[18] City of Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877).
[19] Donald S. Chisum et al., Principles of Patent Law, Foundation Press, 359 (2001).
[21] 35 U.S.C. 102(f).
[22] Gambro Lundia AB v. Baxter Healthcare Corporation, 110 F.3d 1573 (1997).
[24] Id.
[25] Id.
[26] Id.
[27] Id.
[28] Id.
[29] Id.
[30] Donald S. Chisum et al., Principles of Patent Law, Foundation Press, 965 (2001).
[31] Hughes Aircraft Company v. National Semiconductor Corporation, 857 F.Supp 691 (1994).
[32] Id. at 697.
[33] Id. at 698.
[34] S. Rep. No. 83, 100th Cong., 1st Sess., 49-52 (1987)
[35] Hughes Aircraft Company v. National Semiconductor Corporation, 857 F.Supp 691, 698 (1994).
[36] Gardiner v. Howe, 9 F.Cas 1157 (1865).
[37] Id.
[38] 5-16 Chisum on Patents, Section 16.05.
[39] 35 U.S.C. 105(a).
[40] Id.
[41] Hughes Aircraft Co. v. United States, 29 Fed. Cl. 197 (1993).
[42] Id. at 230.
[43] Donald S. Chisum et al., Principles of Patent Law, Foundation Press, 1050 (2001).