Nanotechnology, or manipulation at the molecular or ‘nano’ scale, is such a new phenomenon that science is still exploring its potential. as a result, the IP industry is also playing catch-up.

To the uninitiated, the emerging science of nanotechnology still conjures up horrific visions of a futuristic ‘grey goo’ and the selfreplicating psychotic robots of Michael Crichton’s 2002 best-selling novel, Prey. Yet few recent technologies have created as many column inches in the world’s press as nanotechnology. The scientific world is only just discovering the incredible potential of this scientific marvel. From the development of nanobots, that can selectively seek out and destroy cancer cells within the human body, to a coating of disinfectant containing nanoparticles which could one day produce a ‘selfcleaning bathroom’, the possibilities are both fantastic and infinite. But how will this impact on the IP industry?

Small steps
Untapped, indefinable and, therefore, impossible to protect. That’s the feeling among some sectors of the IP community. And yet, nanotechnology is advancing at an incredible rate. New technologies are being discovered every week and a wealth of new patent applications are flooding patent offices around the world. As patent applications do not require working examples, nanotechnology patents currently on the USPTO database include a space elevator and a nano-adhesive to enable lizards to walk upside down.

Mark Lemley, professor at Stanford Law School, suggests that the latest trends in the nanotechnology industry are already shaping how IP is defined and how patents are administered: ‘Universities and companies seem to think there is something quite significant going on here because they are rushing to the patent office in record numbers to patent nanotechnology inventions.’

The latest USPTO figures corroborate his findings, with 4,996 patents granted in the sector in 2005 and that figure set to double this year. ‘With the number of pending public nanotech patent applications in 2005 outnumbering issued nanotech patents by more than three to one, there is a wave of innovation that the USPTO has yet to process,’ says a senior analyst at Lux Research, a leading strategic advisor on emerging technologies.

One of the stumbling blocks in attempting to create some sort of universal regulatory system for the IP exploitation of nanotechnology is that it is impossible to define. Science still doesn’t know what nanotechnology can do and as a result, from a legal perspective, if the very definition of nanotechnology is blurred, how can these new technologies be legally classified?

In 2007 the USPTO announced that ‘in a continuing effort to improve the ability to search and examine nanotechnology related patent documents, the agency has created over 250 cross-reference art collection subclasses.’ A mind-boggling amount. Class 977 (the USPTO’s classification for nanotechnology patents) also includes a definition for each subclass and search noted to related classifications in other US classes. The EPO has also been watching the sector with great interest.

In patenting technology inventions, applicants should look for new and unexpected functions rising from the nanoscale component.

In 2003 the EPO established the Nanotechnology Working Group to develop a strategy for facing the IP challenges ahead. In November 2005 it introduced ‘Y01N’ tags to label nanotechnology in EPO databases to make it easier for interested parties to source nano-related patent documents.

Dr Richard Gillard, lawyer at Elkington and Fife LLP, explains that in order to obtain patent protection for inventions using nanotechnology, it is important to identify the components that have nanoscale dimensions and identify some significant technical advantage associated with the nanoscale dimension.

‘For example, in printing, inks are often used to form a mask over a component prior to lithography. By incorporating nanoscale clay-based particles, it has been possible to reduce the overall amount of inorganic filler in the ink, thereby improving transparency without reducing the stability of the ink. The ink per se, as well as printing methods using ink, are in principle patentable.’

Gillard also points out that in patenting technology inventions, applicants should look for new and unexpected functions rising from the nanoscale component or a prejudice in the art that has been overcome. ‘This highlights the importance of “critical role”. It is also important that the patent application explains how the nanoscale dimensions are reached over the whole range of the invention and provides evidence of improved properties associated with the nanoscale component’, he says.

The highest-profile case to hit American courts is the long-running Zoltek v US government itself and is a clear lesson in the importance in protecting your IP. US-based Zoltek (working directly for the government) produced a carbon fibre sheet using a nanotechnology which controls electrical resistance. The US government manufactured these fibres in Japan in collaboration with aviation giant Lockheed and, in 1996, Zoltek sued for patent infringement. After 10 years of legal wrangling, Zoltek lost.

The eagerly anticipated US Patent Reform Act of 2007 has caught the attention of nanotechnology companies as it promises to address who is entitled to receive a patent (first-to-invent or first-tofile) and how infringement damages are calculated. These measures mean that, for
the first time, nanotechnology companies need to understand what is at stake and properly manage their patent portfolio.

Amid the confusion, what is clear is that the nanotechnology landscape will not change for the foreseeable future. With its uses and boundaries still blurred, so too is its impact on the IP industry.


Trade Secrets?

• Nanotechnology is a branch of science that manipulates objects at a molecular or atomic level. Advocates say it will change life as we know it for ever. But as the scientific world has only unlocked a fraction of its true potential, caution has been expressed that the pace of change is too fast and its risks undiscovered. Nanotechnology is a growing business and between Us$30bn to Us$200bn worth of products contained nanotechnology in 2005.
• One estimate suggests that 15% of global manufactured goods will contain nanotechnology by 2014. The food, cosmetic and pharmaceutical industries are benefitting most so far, and just some of its uses include the production of photovoltaic film that converts light into electricity, scratchproof coated windows that clean themselves with UV, and nanoparticle paint that prevents corrosion.

This article first appeared in IP Review, issue 21

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