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

Furthermore, even if the only difference between a nano-sized invention and the prior art is with respect to its dimensions, then non-obviousness may still be established if the prior art does not teach and/or enable one to make the nanoscale version without undue experimentation. This important principle of law was established by the Courts in In re Hoeksema in which a claim to a chemical compound was rejected by an examiner because its structure was already suggested by the prior art. In disagreement, the Court held that even though the structure may have been suggested, the claimed chemical compound may nevertheless be non-obvious if before the application was filed, no process existed to enable its production. Therefore, if the prior art fails to provide enablement for making a nano-sized invention, then non-obviousness could be established on the basis of size alone.

Sufficient disclosure

A patent application must describe how to make and use the invention without undue experimentation. If the patent application fails to meet these criteria, then either no patent will issue or the claims will have to be narrowed to correspond to the level of enablement supported by the application. In a traditional and predictable technology, such as chemical engineering, procedures for performing various techniques are usually well known and developed, standardized, and reproducible. Thus, the requirement for an enabling disclosure is more easily met for inventions derived from such technologies since less information and examples need to be provided in the application to make and use the invention. The knowledge of one skilled in the art can also be relied upon to fill in any gaps missing from an application to satisfy these legal requirements. However, since nanotechnology typically embraces multiple scientific disciplines, it may likely be less predictable and able to rely on prior art techniques and a few examples to support broad claims in an application.

Furthermore, in the U.S., the inventor is expected to comply with the "best mode requirement" by describing the preferred embodiment or optimal means of practicing the claimed invention if it materially affects the properties of the invention. If specific techniques or instruments were developed for building a nanoscale invention that were recognized by the inventor as the best way of carrying out the invention at the time the application was filed, then the best mode requirement further imposes an obligation to disclose that information to the public.

Clearly, the extent of disclosure sufficient to satisfy patentability will require careful consideration in drafting a nanotechnology-related application if the broadest available patent protection is sought.

Although the interdisciplinary nature of nanotechnology fosters creative new approaches to solving problems peculiar to a research focus, drafting applications for such inventions will require thorough consideration to avoid potential pitfalls in patent prosecution. It is therefore important that an inventor and/or patentee carefully consider how patentability requirements will be applied to nanotechnology and actively involve themselves with their patent practitioner to ensure that their ideas are properly protected. Since the primary difference between a nano-sized invention and its larger-scaled counterpart is typically its size/dimensions, it is particularly important to make clear that the invention constitutes more than a mere miniaturization of known materials and methods. Placing emphasis on how it performs differently, or yields a different useful result from the prior art is key to establishing patentability.

Elizabeth Hayes is an associate with the intellectual property law firm of Smart & Biggar/Fethertonhaugh and is a qualified U.S. and Canadian patent agent. Hayes obtained her MEng in biomedical engineering at McGill University, where she acquired a knowledge base in blood physiology, colloid/polymer chemistry, and immobilization technology due to the interdisciplinary nature of her research work.