Authors: Tyson Keed & Peter Caporn
Few technologies in the modern era have had such broad and far reaching applications than that of nanotechnology. This has also led to the field of nanotechnology stretching the boundaries of patent law. A new technology is typically limited to a specific field and has only incremental growth over time, this in turn leads to incremental patent protection. Nanotechnology however is not restricted to any single field, with far reaching applications. Given the recent explosion of nanotechnology into all facets of technology, what lessons can be learned with regard to protecting and commercialising new technologies?
Nanotechnology
As a very basic definition, nanotechnology is the manipulation of matter at the nanoscale, or 1 to 100 nanometres, a billionth of a metre. Thus, it relates to a research category inclusive of all types of technologies that deal with the special properties of matter below 100 nanometres. This includes a broad range of scientific fields, such as surface science, organic chemistry, molecular biology, semiconductor physics, microfabrication and the development of materials with particles on the nanoscale.
It should be appreciated that nanotechnology is not in itself a single emerging scientific discipline, but rather it requires a meeting of different traditional sciences, such as chemistry, physics, materials science and biology, to bring together the required collective expertise needed to develop these novel technologies.
Nanotechnology and Patents
Whilst this meeting of many traditional sciences represents great opportunities for exciting new developments with far reaching impact, it also presents a new challenge for both the parties developing these technologies and the patent practitioners, IP lawyers and patent attorneys, attempting to protect them. Patent practitioners have historically been able to draft patents that are confined to clear technology areas, for example the processing of a specific mineral ore, a specific drug delivery mechanism, or pipeline maintenance. There hasn’t been a need for experience across interdisciplinary technologies. Now IP practitioners need to ensure that their patent claims cover the many and diverse applications that have the potential to stem from a single nanotechnology invention.
The many diverse applications for such technologies also present a challenge for inventors as they decide whether and when to obtain protection for technologies. Whilst in a perfect world, patent protection would be sought for all developments, the cost for patent protection will often limit which technologies are patented.
So how does an inventor or developer decide what to patent? Typically, inventors only pursue patent protection if there is a clear commercial use for the development. However, given the many possible applications of an advancement, how can an inventor ensure that they are drawing the most commercial benefit from the Intellectual Property (IP)?
AF Microscopes and Quantum Dots
Guidance can be sought from early advances in nanotechnology. In many cases, technology first conceived in the 1970s and early 1980s, often as academic curiosities, have now become the basis for the majority of commercial advancements in nanotechnology. Two examples are noted below reflecting different areas of nanotechnology.
The atomic force microscope (AFM) is one of the foremost tools for imaging, measuring, and manipulating matter at the nanoscale. It represents a fundamental instrument that has been utilised to develop countless further technologies in the field. The AFM was first patented in 1988 by Bennig and IBM. By 1994, over 100 patents were issued per year, and by 2003, over 500 patents were issued in the United States per year making reference to this alone (KOPPIKAR, V., MAEBIUS, S. and RUTT, J. (2004). Current Trends in Nanotech Patents: A View From Inside the Patent Office. NANOTECHNOLOGY LAW & BUSINESS, 1(1), pp.24-30).
Quantum dots and dendrimers are nanomaterials which can be used in a multitude of applications, such as computing, biology, and Photovoltaic devices. Whilst quantum dots were discovered by Alexey Ekimov in 1981, it was not until the mid-1980s that these nanomaterials were first patented. By 1994, over ten patents were issued per year, and by 2003, over 100 patents were issued in the United States per year referring to each of these materials. (KOPPIKAR, V., MAEBIUS, S. and RUTT, J. supra)
As shown above, in many different areas of nanotechnology, even basic advances in intellectual property, which may be seen as only academic curiosities at the time, still form the basis for further advances, in various fields, even decades later. This demonstrates the clear importance for inventors and researchers to ensure that the patent protection of any development is considered prior to publishing. Failure to do so could mean that key commercial opportunities are missed. For example, an invention in quantum dots may have applications in abstract applications such as computing. Thus, even if there is not a clear commercial use for the development known at the time, a patent can form the basis for the key commercial advances in the technology.
Researchers and developers are often faced with a difficult decision regarding whether to seek patent protection for their seemingly “only” incremental developments. Guidance can be sought from the field of nanotechnology in which developments from the 1980’s continue to be utilised in commercial applications today. It can also be seen that the commercial uses of these developments transcend single fields of technology.
It can be seen that development of a new technology, in any field, requires careful consideration of the potential end uses so that a decision regarding whether, and how, to patent the development is made. If patent protection is sought, the claims must be drafted broadly enough to ensure all the potential applications are adequately covered by the patent. All these factors must be adequately considered to ensure that all the potential commercial benefits can be derived from any developments, even those that may be considered only incremental and have no clear commercial application.