Protecting Your Nanotechnology Inventions – Part 2: Defining Your InventionAugust 19, 2018

Have you invented materials with improved properties, such that you can seek to protect materials having those properties? Have you invented materials with a new structure such that you can seek protection of that structure beyond your specific species of materials? Have you invented a method that can be applied to items broader than your specific application? The answers to these questions can inform your goals for carving out a defined portion of the competitive market, which in turn informs your intellectual property strategy. If your technology is a component in a larger product, which is used in an industrial process, can you pursue protection for your component, the larger product containing your component, and use of that product in the industrial process? The answers to these questions depend on your ability to properly define your invention.

There are two-sides to defining your invention – the state of the art and the technical details of your invention. The state of the art provides context and boundaries for your invention. Beyond the specifics of your own research, prior art searches can be helpful in understanding the state of the art. Art searches will help you understand what has already been discovered and the context of your discovery. This can assist in defining the metes and bounds of your invention. The second side of defining your invention is to identify the technical specifics of your invention. This can be a proper understanding of the structure and composition, how the structure and composition can be varied without departing from your inventive concept, substitutes for components in your composition, properties of your invention, and how those properties are affected by different changes. Viewing these technical details in light of the state of the art can assist in defining your invention.

Properly defining your nanotechnological invention is important for a number of reasons. One reason is that it will give your patent claims strength. A properly defined invention will meet the requirements for definiteness and clarity, as well as provide a context that differentiates the claimed invention from the art. This will aid in the examination of your patent application and the strength of your issued patent.

Another reason that properly defining your invention is important, is that it can limit the prior art effect of your own patent application against your future innovations. Too often the tendency is to broadly define the invention so as to grasp as much as possible in a patent application, when the heart of the invention may actually be narrower. This can lead to your first application impeding your own later patent applications directed to new innovations in the same technical space.

This is the second post in a multipart series. Read the first post, “Protecting Your Nanotechnology Inventions – Part 1: Defining Your Space” for more information.

Jonathan L. Kennedy, is a Patent Attorney in the Biotechnology & Chemical Practice Group at McKee, Voorhees & Sease, PLC. For additional information, please visit or contact Jonathan directly via email at


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