Patenting Nanotechnology: Exploring the Challenges

Size is everything in the world of nanotechnology. It also raises a number of interesting questions when it comes to determining the validity and enforceability of nanotechnology patents. Is “nanoscale” a sufficiently precise term to include in a patent claim? Are current patent examination practices – to determine the patentability of a claimed invention - sufficient to effectively scrutinize nanoscale inventions? What are the difficulties in assessing the novelty of an invention in this emerging area where, in general, extensive prior art is considered to be lacking. What are the difficulties associated with enforcing nanotechnology patents? What happens if the size range mentioned in a nanoscale patent application overlaps with that featured in the prior art? Is downsizing in itself obvious for the person skilled in the art? Although, case law on these issues is not unique to nanotechnology there is an emerging consensus about how to address these issues under existing patent laws.

A precise and uniform definition of the terms nanotechnology and nano-scale has long eluded scientists and patent offices. Lack of a standardized definition has implications for patent search and classification, and for tracking patenting trends. It magnifies the risk that relevant prior art remains undetected and creates uncertainty about how an ordinary person skilled in the art – one of the yardsticks against which patentability is established - might interpret “nanoscale”. It heightens the risk of a nanotechnology patent being invalidated and of overlapping or conflicting patents being granted.

The three key nanotechnology patent powerhouses – the USPTO, EPO and JPO – have each sought to resolve this issue by respectively adopting definitions that generally speaking restrict nanotechnology inventions to a length scale of less than 100 nms. This effectively excludes applications that claim nanoscale measures according to different nanomeasures. But the situation is further compounded by the use in patent applications of ambiguous or undefined terms, such as “nanoagglomerates,” creating uncertainty and making it difficult for patent examiners to assess how an invention differs from the prior art.

The inherently multidisciplinary nature of nanotechnology presents significant challenges for patent granting authorities. In practice, applications are assigned to examiners with the expertise most relevant to an invention. As nanotechnology patent applications typically span multiple scientific and engineering fields, it is unlikely that any single examiner has the required expertise to appropriately assess the patentability of such an application.

This heightens the risk of overlooking relevant prior art and inaccurately assessing an invention’s novelty or inventiveness. It also increases the chances of granting substandard patents that may not stand up in court.

Amid the rising number of nanotechnology patent applications, the EPO, JPO and USPTO are exploring ways to address the problem - for example, by placing greater emphasis on training examiners to carry out more specialized prior art searches for nanotechnology applications. The introduction of new nanotechnology tags in patent classification systems - “Y01N” (EPO), “ZNM” (Japan) and “977” (USPTO) - is also helping to enrich and improve the quality of these searches.

Full article in WIPO Magazine