Patent Protection for Inventions in the Field of Nanotechnology
July 14, 2015
The explicit exclusion of certain subject-matter from patentability in the law has led to misconceptions about what can and what can’t be patented and nowhere is this more true than in the case of software-related inventions.
A patent is an exclusive right granted for an invention, which could be for a product or a process. A granted patent protects an invention for a period of 20 years from filing the patent application.
To be protected by a patent an invention must be novel, that is, it must have some new characteristic which is not known in the body of existing knowledge. This body of existing knowledge is called “prior art”. The invention must also show an inventive step which means it could not be obviously deduced by a skilled person working in the technical field. A good indication that a development involves an inventive step is if it provides some kind of advantage over the prior art, or solves a problem with the prior art.
Patent protection means that the invention cannot be commercially made, used, distributed or soldin a territory where the patent is in force, or imported into that territory, without the patent owner’s consent. Patent rights can be enforced in a court to prevent the patent infringement.
Inventions in the field of nanotechnology generally qualify for patent protection, subject to meeting the conditions of patentability discussed above.
The European Patent Office (EPO) defines nanotechnology as encompassing:
“entities with a controlled geometrical size of at least one functional component below 100 nanometres in one or more dimensions susceptible of making physical, chemical or biologicaleffects”
There are a number of points to consider in relation to protecting nanotechnology inventions, and these are discussed below.
Filing a patent application with a broad scope of protection
It is perhaps a consequence of the multi-disciplinary and multi-industry nature of nanotechnology that a single invention could have many uses.
For instance, an invention relating to carbon nanotubes, semiconducting nanocrystals or processes for functionalizing them may have applications in many fields, such as semiconductor design, biotechnology, construction, pharmaceuticals, agriculture and telecommunications.
Potential markets and uses for the invention should therefore be considered so that as many as possible can be covered in any patent application, such that the patent application is as broad as possible.
One problem for companies operating in the field of nanotechnology, which is, to a certain extent, also true for a number of other emerging technologies, is that the claims of patents granted to third parties could be overly broad, due at least in part to a lack of available prior art. As a result patent holders could lock up huge areas of technology, particularly if such patent holders refuse to license their patents, or only agree to license on unreasonable terms.
On the other hand, a possible problem for the owner of a patent with overly broad claims is that the claimed invention may not be adequately enabled such that it could not be carried out by a skilled person. In such cases the patent may be vulnerable to invalidation.
A question may arise as to whether the reproduction of a known product or structure but on a nanoscale would meet the requirements of novelty and inventive step.
A nanoscale formulation of previously disclosed chemical compounds, structures or materials larger than 100 nanometres is generally considered to be new. This general assertion could be questioned if the previously disclosed formulation has been prepared in the same or a similar way to the nanoscale formulation since nanoparticles may then be implicitly present, if not explicitly disclosed.
Provided the nanoscale formulation exhibits properties that are, in some measure, unanticipated or different from those found in larger scale prior art, then the requirement for an inventive step should be met.
For example, in BASF v Orica Australia (T-0547/99), the EPO Board of Appeal held that an application by Orica for a nanoscale formulation (i.e. particles smaller than 100 nanometres) was not rendered obvious by BASF’s prior patent which disclosed polymer particles larger than 111 nanometres, despite the similarity in particle size.
Orica’s formulation was not considered obvious because the smaller nanosized polymer particles exhibited remarkably improved technical properties compared to the slightly larger particles disclosed in the prior patent.
On the other hand, if the development is simply to miniaturise known elements to perform the same function, and yields no more than might be expected from the diminished size, then the development may be considered obvious, and not therefore inventive.
Possible problems in policing and enforcement of nanotechnology patents
In some cases the only way to determine whether a marketed end product infringes a nanotechnology patent is to use sophisticated and expensive microscopy techniques and equipment.
Analysis of every suspect product, particularly for a patent conferring a broad scope of protection which covers many different uses, may be impossible or prohibitively expensive.
How to identify an infringing product is something therefore to bear in mind when preparing and filing a patent application. A question to ask is “How would I know if someone copied my invention?” If, for instance, there was a visual indication of infringement by a third party product or process, protection could then be sought for the visual indication.
Regarding process claims, i.e. a method of making a product, these can be particularly difficult to enforce, not least because the actual process of making a product would probably be carried out in a competitor’s factory and cannot therefore readily be investigated. However, the product which results directly from the claimed process is also covered by such a claim, and this direct product could perhaps be more readily investigated. Furthermore, if it is proven that a third party has manufactured the direct product of the claimed process the burden then falls on the third party to prove that it was not manufactured by the claimed process.
Commercialising a nanotechnology-related product
As indicated, patents granted to third parties in the field of nanotechnology may provide a broad scope of protection which extends beyond the intended application of the patented technology, for instance, into unrelated fields.
Any company seeking to develop and commercialise a nanotechnology-related product, whether or not this product is itself patent protected, may therefore be advised to take a comprehensive review of the nanotech patent landscape, including in unrelated fields, to ensure that all patents owned by third parties are identified.
A licensing strategy, if necessary, could then be implemented to ensure that all relevant patented technologies are licensed, which could avoid potentially costly and unforeseen legal disputes.
If you have any questions regarding intellectual property rights within the field of nanotechnology then please get in touch with usual contact at Swindell & Pearson or Simon Foster at [email protected]. Simon is based at our Derby office and is on track to qualify as a UK and European Patent Attorney.