Size matters: convincing the patent office that big things come in small packages.

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With the arrival of the biotechnology revolution a few decades ago, inventors found themselves confronted with new challenges at the patent office. Biotech inventions were not only expanding applications of science and medicine, but they were also stretching the boundaries of intellectual property law--the patentability of living matter raised the greatest controversy of all.

The biotech industry was not alone. With the deluge of computer-related patent applications that followed the arrival of the computer revolution, claims for such inventions, including business methods, soon encountered their own set of challenges. Applications filed for these technologies, fuelled by debate through landmark court decisions, had the patent offices scrambling to review and revise examination policies in order to manage their "fit" within a patent system founded and legislated on more traditional fields of scientific endeavour.

Nanotechnology has now taken centre stage and has been hailed as the next industrial revolution that will replace or change all other technologies. In contrast to the biotech industry that took tremendous strides to obtain patent protection for living matter, the nanotech industry is focusing on the molecular architecture of living and non-living matter. By operating at the molecular level, nanotechnology offers the means to manipulate and redesign ordinary matter that afford numerous advantages in applications used in many sectors of our society today, with more expected to arrive in the next five to ten years. Not surprisingly, the number of nanotechnology-related patent applications being filed at the patent office is increasing exponentially since like its predecessors, valid and enforceable patent protection will be required in order to attract investment that promotes the research and development of future technologies.

Nanotechnology for patent purposes

Nanotechnology generally refers to the engineering and manipulation of matter at the scale where size is measured between one nanometre (nm) to about 100 nm. The motivation of researchers to work with matter at the nanoscale stems from numerous advantages afforded by extraordinary changes that take place with respect to the properties of ordinary matter. This is when the laws of classical Newtonian physics are replaced by quantum mechanics and the wavelike properties of objects start to compete with their size thus affecting physical and/or chemical properties.

Chemistry is perhaps one of the best examples of how this new technology has been exploited. Take, for example, a carbon nanotube having a cylindrical shape formed from a single layer of carbon atoms and a diameter of only about one to two nm. Because of their structure, carbon nanotubes exhibit extraordinary properties in that they are 100 times stronger and six times lighter than steel, more conductive than copper and a better insulator than diamond. This makes them useful in a variety of applications. For example, with their needle-like geometry and ability to pierce a delicate plasma membrane without damaging the cell, carbon nanotubes are being used as nano-injectors for gene therapy in the delivery of DNA and RNA. Another application is seen in the manufacturing of sporting gear where, for instance, the bicycle Floyd Landis used at the 2006 Tour de France was constructed from carbon nanotubes to enhance the strength of the bicycle's frame. It weighed only one kilogram.

Patenting nanotechnology

In order for an invention to be patentable, it must be novel, non-obvious, have utility and be described so as to enable a person skilled in the art to make and practice the invention without undue experimentation. These criteria often rely on the perspective and understanding of "a person of ordinary skill in the art." Because nanotechnology-related products and processes interface with a wide range of applications and scientific fields, how one identifies the level of "ordinary skill," and other questions have transpired distinctive to patenting nanotechnology.

Novelty

One of the basic legal requirements for obtaining a patent is that the invention must be novel over the prior art. An invention lacks novelty if a single prior art reference describes, either expressly or inherently, every element of the claimed invention. "Inherency" exists when an undisclosed element is necessarily present in the prior art substance or process and would "flow as a natural consequence or characteristic" from the prior art. For example, physical properties such as melting points and solubility are examples of inherent characteristics that are generally insufficient alone to render a known substance novel and patentable.

A potential rejection likely to be encountered in a nanotechnology-related application depends on whether the claimed invention lacks novelty simply because it is a much smaller version of its previously disclosed larger counterpart. Take for example, a microscopic carbon tube having a cylindrical shape formed from several thousand layers of carbon atoms and having a diameter of only about one to two millimetres. Would a carbon nanotube having a single layer of carbon atoms and a diameter that is about a million times smaller be novel in view of the previously disclosed microscopic version? Since the wall thickness and diameter of both carbon tubes are not identical, it could be argued that every element of the carbon nanotube is not found in the prior art carbon tube and therefore, novelty exists. However, even if a prior art reference does not "expressly" disclose or specify the same elements of an invention (in this case, the wall thickness or tube diameter), a patent examiner might counter-argue that the carbon nanotube "inherently" exists in the microscopic version and therefore, lacks novelty. The basis for the argument might be that the carbon nanotube constitutes a mere change of scale of its elements.

While taking an existing technology and making it smaller may not usually result in a patentable invention, the ability to manipulate atoms into a certain configuration that produces distinctive properties can be a patentable invention. Unless an examiner could show that scaling down a larger prior art version would produce the same properties and characteristics of the nano-version, then a rejection made on the basis of inherent disclosure by the prior art version would be improper. For example, a microscopic carbon tube would not possess the enhanced thermal and electrical properties of the carbon nanotube and therefore, cannot be an inherent disclosure of the nanotube. Therefore, the question of the patentability of a known material or method manipulated at the nanoscale turns on whether new and/or improved properties emerge. Providing there is at least one new and previously unknown property between a nano-sized invention and its larger-sized prior art version, inherent anticipation cannot exist. On this basis, it is important for inventors to realize that they have a greater chance of securing patent protection for their invention if it can be shown that properties of the nanoscaled version are unique and never existed previously.

Obviousness

Yet another question in determining the patentability of a nanotechnology-related invention is whether miniaturization of a conventionally sized prior art material or method at the nanoscale level is sufficient to demonstrate non-obviousness. It has long been well established by the patent office that the mere change in the dimensions or proportions of a device are generally insufficient to form the basis of a patentable invention. The Courts have supported this principle and found that where the only difference between the prior art and a claimed invention is the relative dimensions, and the claimed invention does not perform any differently than the prior art, then no patentable distinction can be made.

If a nano-invention and its prior art analogue have similar elements, serve identical functions, operate in substantially the same way, and if undue experimentation is not involved in making the nano-invention, then an examiner might argue that a mere difference in size is obvious. Alternatively, if the difference in size imparts unique characteristics and functions to the invention due to the fundamentally different laws of physics that only exist at the nanoscale, then the obviousness dispute might be avoided. Of particular importance is if a change in proportion or arrangement of elements produces "unexpected" results that would be completely non-obvious to a person of skill in the art. Unexpected results are key to establishing non-obviousness even though an invention may be similar to the prior art in many respects. For example, because the carbon nanotube can carry a billion amps/ centimetre (2) whereas its microscopic version cannot, the high current carrying capacity of the carbon nanotube is an unexpected result and therefore, non-obvious.

Another important component in evaluating obviousness of an invention is whether a person of skill in the art would have a "reasonable expectation of success" in arriving at the invention based on the prior art. If a combination of prior art references suggests a reasonable expectation that the result would be successful, then obviousness may be found. Alternatively, if the result would not be predictable and it required excessive experimentation to achieve, then the result may prove to be inventive although suggested by the prior art.