Patenting nanotechnology. Exploring the challenges

• Author: Aparna Watal - Thomas A. Faunce
• Position: Legal Officer (Asia-Pacific) Attomic Labs, Inc - Faculty of Law, Australian National University (ANU)
• Pages: 25-28

About nanometers

Nanotechnology uses a basic unit of measure

called a “nanometer ” (nm) derived from the Greek

word for midget. A nanometer is a billionth part (10-9)

of a meter, with each nm being only three to five

atoms wide. A sheet of paper is 100,000 nms thick.

At the nanoscale, materials can express unusual or

distinctive physical, chemical, and biological prop-

erties, which differ in important ways from bulk ma-

terials and single atoms or molecules.3At the

nanoscale, the laws of quantum physics take over

and new physical properties emerge enabling ex-

citing new applications. Nanotechnology is about

building functional mechanisms with nanoscale di-

mensions, such as supercom-

puters the size of a sugar cube

with the power of a billion

laptops. In sum, “by taking ad-

vantage of quantum-level

properties,” nanotechnology

“allows for unprecedented

control of the material world.”4

The technology is already evi-

dent in an increasing range of

consumer products such as

cosmetics and sunscreen lo-

tions. Zinc oxide, for example,

a key ingredient of sunscreen

lotions leaves a chalky-white

residue on the skin. Using

nanoscale zinc oxide particles,

the lotion becomes clear and leaves no visible trace.

Clothing manufacturers also use nanotechnology to

create stain and grime repellent clothing. Nano-

com posit e mater ials t hat offe r adva ntage s in

weight, strength and durability are increasingly

used in manufacturing car parts and sports equip-

ment, such as golf clubs and tennis rackets. Nano-

materials can serve infinitely varied applications,

from site-specific drug delivery mechanisms and

biomarkers that light up cancer cells to cost-effec-

tive and energy efficient photovoltaic cells.

In the past 20 years, nanotechnology has enjoyed

phenomenal growth, with the “nanotech” market

projected to be worth a trillion US do llars by 2015.

This has fuelled an upsurge in nanotech-related

patent applications filed worldwide which grew

more than 50-fold between 1991 and 2008.5The

push to protect nanotechnolo gies has highlighted

a number of i ssues relating to the patent system.

Size matters

Size is everything in the world of nanotechnology. It

also raises a number of interesting questions when

it comes to determining the validity and enforce-

ability 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 invention6

– sufficient to effectively scrutinize nanoscale inven-

tions? What are the difficulties in assessing the nov-

elty of an invention in this emerging area where, in

general, extensive prior art is considered to be lack-

ing. What are the difficulties associated with enforc-

ing nanotechnology patents? What happens if the

size range mentioned in a nanoscale patent appli-

cation overlaps with that featured in the prior art? Is

downsizing in itself obvious for the person skilled in

the ar t? 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.

PATENTING

NANOTECHNOLOGY:

EXPLORING

THE CHALLENGES

>>>

25

Nanotechnology is one of the most promising and radical new technological frontiers. It involves the engi-

neering of functional systems or the design, production and application of materials at the molecular scale

1

that is, with structures around 40,000 times smaller than the width of a human hair. It holds enormous prom-

ise for the development of new materials and devices with a vast range of applications. It is the “global econ-

omy’s fastest growing information and investment sector”.

2

In this ar ticle, Aparna Watal, Legal Officer (Asia-

Pacific) Attomic Labs, Inc., and Professor Thomas A. Faunce, Faculty of Law, Australian National University

(ANU), explore some of the challenges patenting authorities face when dealing with nanotechnology.

1www.crnano.org/

whatis.htm

2www.nanotech-

now.com/

3www.nano.gov/ht ml/

facts/whatIs Nano.html

4www.nanotech-

now.com/basics.h tm

5 Yan Dang, Yulei Zhang,

Li Fan, Hsin chun Chen,

Mihail C. Roco,

‘Trends in worldwide

nanotechnolo gy patent

application s: 1991 to

2008’ (2010) Journal of

Nanopartic le Research

12: 687-70 6.

6 To merit a patent ,

among othe r

requirements,

an inventio n must be

novel, involv e an

inventive s tep

(be non- obvious) and

must have industrial

application (utility).

Photo: Fuyu Tamanoi, Jeff Zink, UCLA

Researchers use

nanoparticles to

shrink tumors in

mice. Fluorescence

shows accumulation

of nanoparticles in

tumor.

One red blood cell has

a diameter of around

7,500 nanometers

Photo: iStockphoto.com/Kirill Putchenko