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Introduction:
Nanotechnology is the design, characterization, production and application of
structures, devices and systems by controlling shape and size at the nanoscale.
It is the understanding and control of matter at dimensions of roughly 1 to 100
nanometres, where unique phenomena enable novel applications.
There is no single field of nanotechnology.
The term broadly refers to such fields as biology, physics or chemistry, any
scientific field, or a combination thereof, that deals with the deliberate and
controlled manufacturing of nanostructures.
Nanoscience is the study of phenomena and
manipulation of material at the nanoscale, in essence an extension of existing
sciences into the nanoscale
Materials reduced to the nanoscale can
suddenly show very different properties compared to what they show on a
macroscale. With Nanotechnology, a large set of materials with distinct
properties (optical, electrical or magnetic) can be fabricated. The smaller a
nanoparticle gets, the larger its relative surface area becomes. Its electronic
structure changes dramatically, too. Both effects lead to greatly improved
catalytic activity but can also lead to aggressive chemical reactivity.
The mere presence of nanomaterials
(materials that contain nanoparticles) is not in itself a threat. It is only
certain aspects
that can make them risky, in particular their mobility and their increased
reactivity. Potential risks of nanotechnology can broadly be grouped into three
areas: (1) the risk to health and environment from nanoparticles and
nanomaterials; (2) the risk posed by molecular manufacturing (or advanced
nanotechnology); (3) societal risks, such as possibility of military
applications of nanotechnology as well as enhanced surveillance capabilities
through nano-sensors.
Patentability Requirements:
The standards required for patenting of nanotechnological inventions are the
same as in any other invention, namely:
# Novelty,
# Inventive Step, and
# Industrial Application.
Novelty:
An invention is considered novel if, prior to the filing date of the patent, it
has not been made available to the public by any means:
- oral description,
- written description, or
- prior use.
The size of the nanoscale component should
be sufficient to distinguish that component from that of the prior art.
Novelty as a requirement for patentability
is embodied in:
# Article 54, European Patent Convention
# Section 2, UK Patent Act, 1977
# Section 102, US Code Title 35 ¡V Patents
# Section 2 (1)(l), Indian Patents Act, 1970 ( as amended in 2005)
The novel properties characterising a
material in nanoparticle form are not detectable on the same material at macro
scale though purposely looked for. It cannot be affirmed that the novel property
exhibited by the material at nanoscale was inherent in the same material known
at macroscale.
The prefix Nano, unlike the prefix
¡§Recombinant¡¨ in biotechnology, may be able to reinstate the novelty of a
known substance or material, specifically when accompanied by a novel technical
effect.
Case study (decisions of the EPO Enlarged
Board of Appeal):
1. Decision in the T 0006/02 (Photodegradable Cellulose Ester Tow) Case:
The increased photodegradability of cellulose ester by the
addition of nano particle size Titanium Dioxide is novel as a generic disclosure
like ¡¥plastics materials¡¦ as laid down in the prior art does not normally take
away the novelty of any specific example (cellulose esters) falling within that
disclosure¨
2. The Decision in the T 0915/00 (Nanocrystalline
Metals) Case:
The nano crystal Nickel material, obtained by electrode
position and having crystalline size of less than 11 nm, is novel over a
substantially identical material disclosed in the literature, comprising macro
crystalline Nickel obtained by electrodeposition¨
3. Decision in the T 0509/92 (Dipeptide
Crystals) Case:
The Board is of the opinion that there was no disclosure in any of the said
prior art documents of aspartame type IIa crystals having the given X-ray
characteristics and moisture content. For these reasons the novelty is
acknowledged¨
Inventive Step:
The claimed subject-matter implies an inventive step if for a person ordinarily
skilled in the art, it is not obviously derivable from the state of the art (the
test of non-obviousness). It must focus on previously unattainable size,
structure, compositions, organization, methods of measurement and methods of
changing the property of materials, as well as applications of the new
properties.
The "skilled person",
in the context of nanotechnology would comprise of a team of persons, each
expert of a different technical field. This requirement is in order with the
multi-disciplinary nature of nanotechnology, which brings together many varied
fields of science.
In nanotechnology, the results of the
experimentation are mostly unpredictable and based on the presumption of a
suggested outcome. If there is success in achieving the suggested outcome
through experimentation, the resulting invention (the nanoparticle) can be said
to involve an inventive step.
Case Study (decisions of the EPO Enlarged
Board of Appeal):
1. The Decision in the T 0070/99 (Fluid handling in micro fabricated analytical
devices) Case:
When the miniaturisation of a device is accompanied by an unpredictable effect,
the result of the miniaturization should always be regarded as inventive
regardless of the apparent obviousness of the means used to achieve it. The
board is convinced that the prior art disclosed in the other documents cited by
the appellant does not come closer to the invention and that these documents do
not contain any more relevant information¨
2. The Decision in the T 0915/00 (Nanocrystalline Metals) Case:
The method of the claim was distinguished from the continuous electroplating
method of prior art essentially in that it comprised passing direct current at
pulsed intervals and under peak current density and timing conditions selected
in the ranges set out in the claim so as to deposit nanocrystalline material of
size less than 100 nm on the cathode, instead of passing direct current in a
continuous manner. The Board affirms that the skilled person had no obvious
reason to foresee that the prior teaching could still be successfully
extrapolated to structures smaller by at least two orders of magnitude, if not
with the benefit of hindsight¨
3. The Decision in the T 0453/97 (Antireflective Coating for use in
Photolithography) Case:
.The technical problem underlying the subject-matter of the
claim as objectively defined in view of this nearest prior art is to
still further reduce the optical reflectance of the antireflective film
of titanium nitride disclosed in the prior art. The skilled person could
not, in the Board's view, be expected to discover the claimed range in
an obvious way in the course of routine experiments he would perform
when putting into practice the teaching of the prior art¨
4. The Decision in the T 0952/01 (Method of coating a Substrate) Case:
The prior art does not suggest the use of particles in the
claimed size range of 20 to 70 nm because it recommends a preferred size
range of 100 to 500 nm and thus clearly teaches away from the use of
particle sizes below 100 nm
Industrial Application:
In order to fulfill this criteria, the invention must be one of utility,
must be industrially applicable and operable. The technology must
illustrate a real-world benefit. The invention must also be feasible,
not merely speculation or science fiction.
Apart from these, the patent application in order to be admissible must
also sufficiently disclose the invention and set out the claims with
clarity.
The focus of the claims must be on the nanotechnology aspects. The
claims must particularly point out and distinctly claim the invention to
be patented. They shall define object of the protection and shall be
clear, concise and based on the description. Each and every technical
term used in a claim should be properly explained in the disclosure.
The patent application shall provide sufficient detail of the best
method of performing the invention so that a skilled worker in the field
is able to do so. Sufficiency is to be determined by the repeatability
of the invention. The skilled person should be able to realise the
invention essentially over the whole claimed ambit. The realisation of
the invention, and therefore the achievement of the declared effects
should not depend on chance. An arbitrary generalization of sizes or
parameters would lead to the loss of repeatability of the invention. If
the application comprises examples of one sole embodiment of the
invention, no protection shall be given for ¡§equivalent¡¨ embodiments,
not sufficiently investigated.
Case Study (decisions of the EPO Enlarged Board of Appeal):
1. The Decision in the T 0915/00 (Nanocrystalline Metals) Case:
Generalization was accepted only because two subsequent documents
substantiated the repeatability of the process also with metals other
than Nickel: otherwise no generalization is accepted. The board is
satisfied that the process of the claim is disclosed in the patent in a
manner sufficiently clear and complete for it to be carried out by the
person skilled in the art
2. The Decision in the T 0288/02 (Atomic and molecular radicals of
Nitrogen) Case:
(Process of epitaxy using as doping agent atomic or molecular Nitrogen
radicals.)
The sole use of molecular Nitrogen radicals was described
with all experimental details and examples. The Board considers the embodiment
molecular radicals¨ is the
only embodiment actually disclosed, whereas
atomic radicals is merely
speculative thus not sufficiently disclosed¨
3. The Decision in the T 1250/01 (Methods and Test Tools) Case:
The lack of analytical means for monitoring one single parameter
of the invention amounts to a lack of sufficiency of disclosure of the
invention. All analytical methods, tests, essays and analytical tools necessary to
check the realisation of the invention should be described with all
details in the application
Conclusion:
Nanotechnology brings together many disciplines of science. Filing a
patent application relating to an invention in nanotechnology requires
careful consideration of the potential end uses so that they are
adequately covered by the patent, an exercise which may draw upon
expertise in several different fields.
Unique legal issues will arise, that require an understanding of case
law from diverse areas. Nanotechnology poses some challenges to current
conceptualizations of law. The previously recognized principles of
novelty, unobviousness etc. need to be diluted in order to fit the need
for a science like nanotechnology.
Strong patent protection may spur research
and invention, but it may also lead to a patent thicket¨ and expensive litigation over seminal
patents. Patent thicket, a phenomenon peculiar particularly in patents
in nanotechnology, basically refers to a situation where though a patent
is granted to a nanotechnological invention, it becomes unworkable due
to the operation of a previously granted patent for a similar invention.
The subsequent patent holders, in order to make their patent workable,
have to first obtain licenses from the previous patent holders.
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The author can be reached at :
sneha_venky@legalserviceindia.com
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Patent
Protection in the field of Nanotechnology:
