Introduction
One of the most promising and revolutionary new technical horizons is nanotechnology. It entails the design, manufacture, and use of materials at the molecular scale, i.e., structures 40,000 times smaller than that of the width of a human hair. It has a lot of potential for developing novel materials and gadgets with a wide range of uses. It is the “fastest expanding information and investment industry in the world economy.”
Materials at the nanoscale can have uncommon or distinct physical, chemical, and biological properties that differ from bulk materials and single atoms or molecules in significant ways. The laws of quantum physics take control at the nanoscale, and new physical qualities arise, allowing for fascinating new applications. Building working mechanisms with microscopic dimensions, such as supercomputers the size of a sugar cube with the processing capacity of a billion laptops, is what nanotechnology is all about. In summary, nanotechnology “allows for unparalleled control of the material universe” by exploiting quantum-level features.
The quest to safeguard nanotechnologies has brought to light a number of patent system flaws.
Issues with Regard to Nanotechnology
In the world of nanotechnology, size matters. It also raises a variety of intriguing considerations about the validity and enforceability of nanoscale patents.
Is “nanoscale” a precise enough phrase to use in a patent claim? What are the challenges in determining the uniqueness of an invention in this new field, where considerable previous art is generally deemed to be lacking? What are some of the challenges in enforcing nanoscale patents? What happens if a nanoscale patent application’s size range coincides with that of the prior art?
The lack of a consistent definition has ramifications for patent search and classification, as well as trend tracking. It increases the possibility of important previous art going unnoticed and raises questions about how an ordinary person versed in the art may understand the term “nanoscale,” which is one of the yardsticks used to determine patentability. It increases the likelihood of a nanotechnology patent being invalidated, as well as the granting of overlapping or contradictory patents.
The USPTO, EPO, and JPO, three main nanotechnology patent powerhouses have each attempted to tackle this issue by adopting definitions that, in general, limit nanoscale inventions to a length scale about less than 100 nms. This substantially eliminates applications that promise nanoscale measurements based on various nano measures. However, the inclusion of ambiguous or unclear words in patent applications, such as “nano agglomerates,” adds to the confusion and makes it difficult for patent examiners to determine how an invention differs from the prior art.
Novelty under Nanotechnology
In general, size is not a necessary requirement for determining an invention’s uniqueness. Nanoscale formulations of previously published chemical compounds, structures, and materials are used in several nanotechnology inventions. Does this rule out the possibility of patenting these inventions? Exceptions have been made when nanoscale inventions reveal qualities that are unexpected or different from those seen in larger size prior art.
The way EPO has approached it is to assess novelty of these so-called “selection inventions,” the overlap should be narrow in relation to the larger prior art range, sufficiently far removed from the larger range, and indicative of an invention, for example, by exhibiting a new or unexpected effect that occurs only within the selected sub-range. The new impact does not make the sub-range innovative in and of itself; rather, it allows the inference that the sub-range was expressly chosen to provide a technical advantage or resolve a technical issue in the prior art, and therefore it is original.
The existence of “a thick network of overlapping rights” causes ambiguity and makes it difficult for innovators to “design around” existing patents. Patents on ideas that lie within overlapping categories already dominate research on nanotubes, nanowires, nanocrystals, and nano emulsions, threatening to stifle innovation and the advancement of the nanotechnology sector.
Non-Obviousness in Nanotechnology
A nanotechnology patent application must pass the non-obviousness test in addition to establishing novelty. In general, an invention is evident if it miniaturizes known elements that perform the same function and yields no more than would be expected given the smaller size. If a technology provides new and unexpected results or performs previously undiscovered functions that solve a technological challenge related to the prior art, it is deemed non-obvious.
Because nearly all nanoscale technologies exhibit these features, only those outcomes that are unlikely to occur through extrapolations by a knowledgeable person working with smaller structures are considered patentable. Nanotechnology applications can pass the non-obviousness test if they provide a significant technological benefit over prior art, such as allowing a trained person to practice a publicly reported invention for the first time at the nanoscale.
Abuse of Nanotechnology Patent
Nanotechnology patent policing and enforcement is prohibitively expensive and practically unfeasible due to the cross-industry applicability of nanotechnology and the inclination to grant patents on “chosen discoveries” (those using particles in a range of sizes that overlap).A patentee has no straightforward method of knowing whether a competitor or a company in another industry is exploiting a protected technology without permission.
Only sophisticated and expensive microscopy techniques and equipment can verify whether a marketed end product infringes on a nanotechnology patent. Most outfits’ purses are too small to allow for the examination of every dubious product. Furthermore, because much of today’s nanotechnology research is conducted behind closed doors at corporate research facilities and university laboratories, establishing a legitimate justification for an infringement action, even if misuse is identified, can be difficult. These variables have the potential to detract from the basic motivation for patent disclosure, which is to gain an exclusive monopoly on the use and commercialization of an invention.
Legal Aspect Involved in Nanotechnology
Nanotechnologies are “universal” technologies by definition, as they provide a foundation for manufacturing processes and products across a wide range of technologies and sectors. While its cross-industry nature has generated a lot of excitement about its possibilities, it also poses a lot of obstacles for anyone looking to develop and sell goods in this arena. For example, a basic patent on carbon nanotubes or semiconducting nanocrystals, as well as procedures for functionalizing them, has applications in semiconductor design, biotechnology, construction, pharmaceuticals, agriculture, and telecommunications.
However, a patentee may only be active in one or two of these sectors. To ensure that all patents owned by third parties are identified, any company wishing to develop and sell a nanotechnology-related product must take a complete picture of the nanotechnology patent landscape. This, combined with a well-thought-out licensing strategy that ensures all relevant patented technologies are licensed, can substantially speed up the process of obtaining freedom to operate and avoid potentially costly and unplanned legal wrangling.
Nanotech patentees must additionally consider the intricacies of the international patent landscape while crafting patent claims. The fact that different jurisdictions interpret patent law principles differently can have an impact on an invention’s patentability. The challenges in detecting patent infringement and compliance have, undoubtedly, given researchers and inventors a tacit and much-needed freedom of operation so far. However, as more nanotechnology items enter the market, ignoring these patents will become more risky and difficult. The next challenge will be to maintain nanotechnology innovation by ensuring that the intellectual property framework allows inventors adequate flexibility to operate and create novel nanotechnology applications while not significantly undermining the incentives for patent disclosure and investment.
Contributed by:– Nidhi Jha, Legal intern at LLL
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