© 2006, Dawsey Co., LPA
October 2006
Imagine having a cheap, plentiful, and renewable electricity source. Imagine efficient and effective environmental remediation of hazardous waste sites. Imagine being able to rapidly detect airborne and waterborne pathogens. Imagine having bright but environmentally friendly display technology. Nanomaterials may be a key to all of this and more.

Nanomaterials have application in many different research disciplines, from biology and chemistry to physics. Nanomaterials are extremely small particles, about 1/10,000 the size of a human hair, which may measure only a few atoms across. For example, some environmental remediation nanomaterials measure from about 20 nanometers to about 70 nanometers in diameter. By comparison, the diameter of a single atom may range from about 0.1 to about 0.5 nanometers. So, a 20 nanometer nanoparticle may be only 40 atoms wide.

R&D Expenditures Increase
Researchers have known about nanomaterials for many years. However in the recent past, public awareness has generated demand for nanomaterial products, such as skin care products, and anti-fog coatings. With the hope of capturing market share, many company executives are expanding their R&D budgets. Government officials are also recognizing the enormous societal benefits. Accordingly, the Federal Government has established the National Nanotechnology Initiative with funding of approximately $6 billion. As with many explosive and promising technologies, companies are filing patent applications in tandem with their increase in R&D funding.

Nanomaterial Properties – Size Is A Determining Factor
The size and morphology of nanomaterials affects its properties. Typically “nano” refers to particles having maximum x, y, and z dimensions of 100 nanometers and less. When researches synthesize particles on this scale, the onset of unexpected size-dependent phenomena usually enables novel applications. Generally, size-dependent phenomena are driven by a rapid enlargement of the surface area of the bulk powder containing nanoparticles. For example, the surface area of a football field measuring 120 yards long by 53 yards wide is approximately 6,400 square yards. The surface area of nanomaterials in the 10 to 100 nanometer range may be 50 square yards per gram. Therefore, less than 5 ounces of nanomaterial (not enough to fill a zip lock sandwich bag) would have more surface area than a football field. In addition to the extremely large surface areas of nanomaterials, nanocrystals are generally characterized by high surface energies. Thus, researchers were unexpectedly surprised by the reactivity of nanomaterials compared to microparticles having the same composition.

Nanomaterial – Quantum Dots
One example of a nanomaterial is a quantum dot. The quantum dot is an extremely small nanocrystal of only one hundred or so atoms across. Typically researchers tailor electrical properties of quantum dots during fabrication by controlling the quantum dot’s size. Quantum dots promise to revolutionize the electronics and laser industries due to their electrical efficiency. As previously mentioned, as researchers decrease the size of particles into the “nano” range, other material properties, such as the electrical and nonlinear optical properties, unexpectedly change. In many cases, the resulting properties vastly differ from the properties of the bulk material. For example, researchers can cause quantum dots to emit different colors of light by controlling the quantum dot size. Various inventors have patented a variety of methods of making quantum dots. Even so, it appears that the industry is still searching for a cost effective manufacturing method.

Nanomaterial – Quantum Dots
Another type of nanomaterial is a carbon nanotube. As the terminology “nanotube” suggests, nanotubes are tubular structures. The nanotubes are commonly made of carbon, however, researchers have constructed nanotube structures of other materials. Nanotubes may measure between about 3 nanometers and about 70 nanometers in diameter and more than 100 nanometers long. Researchers are interested in nanotube properties both from a structural and material property perspective. For example, the tubular construction permits controlled release of molecules for applications such as drug delivery. Also, the electrical properties of single-walled nanotubes are the most likely candidate for miniaturizing electronics. Researchers can make nanotubes into excellent conductors. Electrical engineers may then be able to replace a most basic building block of these systems – the electric wire that is currently the basis of modern electronics. Lastly, the tensile strength of carbon nanotubes exceeds that of even the strongest steels and at one fifth the weight. Therefore, nanotubes also have structural applications from performance aircraft components to consumer products.

In the last five years, U.S. and international inventors alike filed more than 1,400 patent applications involving carbon nanotubes at the United States Patent and Trademark Office (USPTO).

Inventor Strategy in the Nanomaterial World
As with all other technologies, inventors are entitled to a patent unless the subject matter is not useful, the invention is not new, or the invention is obvious. Usefulness of many nanomaterials is generally not an issue. The nanomaterial world is still relatively new. Therefore, patent applicants should not have significant problems avoiding prior art. However, as researchers proceed to define nanomaterial properties, particularly the relationship between particle size and particle function, the function of the other materials due to a reduction in size may become more obvious. Thus, as is usually the case, later filed patent applications will tend to face an uphill battle with respect to obviousness in the United State Patent and Trademark Office.

To lessen the potential for problems at the USPTO, inventors should, at a minimum, have a thorough search of patents and published applications done and have a patentability opinion written. The benefits of having an early search and opinion are at least two-fold. First, the search and opinion will help direct the research, thus making the research more efficient. Second, the search and patentability opinion will ultimately help improve the quality of any patent application and make it more likely that a patent will issue from the application.