Thursday, 31 March 2011

Patents and the Nanotechnology Age 

Nanotechnology has arrived, and with it, a whole new world of super-small structures with fascinating properties.  Since the introduction of powerful electron and atomic force microscopes, scientists and engineers have been able to peer deep into a world where objects are on the order of a billionth of a meter.  In the world of nano, objects behave differently, manifesting new and fascinating properties.  Super-hydrophobic surfaces, self-cleaning coatings, plastic electronics, ultra-small microprocessors, photonic crystals and lab-on-a-chip technology are but a few of the examples of groundbreaking research taking place in labs across the world. 

If nanotechnology fulfills its promise as the next great technological revolution, it will change the way we live.  Medical devices, clothing, coatings, cosmetics, military technologies, food products, solar power, catalysts, oil and gas…the list goes on.  The often-quoted estimate from the National Science Foundation (NSF) says the market for nanotechnology products will be over one trillion US dollars by 2015 1.  Other estimates have put the number even higher. Whatever the actual market numbers are, nanotechnology may prove to be one of the fastest growing industries and a strong economic force.   

Funding for nanotechnology has been aggressive. The proposed 2011 budget for the National Nanotechnology Initiative (NNI), which began in 2000, is 1.8 billion dollars.  Since 2001, virtually all developed countries have national activities in the area of nanotechnology 2.  In addition to supporting basic research, commercialization incentives are assisting entrepreneurs and start-ups transfer these ideas from the bench to the market. 

A key aspect in the commercialization of any technology is obtaining patent rights.  Intellectual property rights can help secure venture capital and position both new and seasoned companies in key market areas.  Patents also provide the incentive of ownership and encourage innovation.  More than a dozen major U.S. law firms have established nanotechnology patent law specialties 7.

As with biotechnology in the early 80s, nanotechnology is witnessing a “land rush” to the patent office to protect new inventions as broadly as possible 4.  With nanotechnology poised to make such a large economic impact, the first-come-first-claim rush is inevitable.  As with any technology, claiming too broadly in a patent can spell disaster down the road if the patent does not meet the requirement for a full and complete disclosure of the invention.  Terms used in nanotechnology may be ambiguous or ill-defined making it difficult to prove a patent valid/invalid if it goes to litigation.  Litigation arises from the overlapping of patent claims and is a prominent outcome for patents with ambiguous terms. Such a situation makes litigation inevitable although only time will tell how serious the problem becomes 8.  Although the temptation to claim technology as broad a possible always exists, resisting such temptation and claiming with a reasonable scope may prove more valuable in the long run in terms of protecting your rights. 

In addition to dealing with a proper description and claim drafting, examiners will need to be trained to determine what does and does not constitute nanotechnology.  As such, patent offices will require individuals with the proper background.  As nanotechnology is a relatively new science, this process may take years to properly implement.

Efficient and accurate classification schemes are required to allow examiners to locate prior art related to the technology in the application.  If the terminology is vague, making a decent scheme can be problematic.   The EPO has introduced a tagging system (Y01N) and is focusing efforts on ensuring their examiners are prepared for the highly interdisciplinary nature of this new technology.  In 2004, the United States Patent and Trademark Office (USPTO) created a classification system (977) with 250 cross-reference art collection subclasses6 that uses the following definition:

 1) related to research and technology development at the atomic, molecular or macromolecular levels, in the    length of scale of approximately 1-100 nanometer range in at least one dimension, and

2) that provide a fundamental understanding of phenomena and materials at the nano-scale and to create and use structures, devices and systems that have novel properties and functions because of their size.

The World Intellectual Property Organization (WIPO) has identified two potential problems/challenges 5 that will need to be addressed regarding nanotechnology:

1) granted claims may be overly broad due to a lack of available prior art (or the ability to find it).

2) does the reproduction of a known product or structure at the nanoscale meet the requirements of novelty and/or inventive step?

The first issue may allow inventors to lock up unnecessarily large areas of technology, leading to many overlapping and invalidated patents.  Well-trained examiners and an accurate classification scheme will help to mitigate this issue.  The second part is perhaps more interesting.   If a researcher simply “shrinks” the material in question, is he/she infringing?  Could rights be granted without specification of the size?  What range of sizes are considered nano? 

These issues and many others will be explored throughout this blog site.  Nanotechnology is a fascinating area of study and an equally fascinating area of IP. Stay tuned for more nanotechpatents blogs. 

1. There is an article suggesting this quote has been based on a questionable and hyped-up market analysis. See the discussion here:

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