Patenting Nanotechnology In Australia

This article first appeared in The Watermark Journal Vol 23 No 3 (September 2006)

The unique behaviour of materials at the nanoscale offers countless opportunities. Where opportunities with potential industrial applications arise in the emerging field of nanotechnology, intellectual property considerations must be addressed at the outset. Relevant considerations include both the options for protecting inventions, and the risk of infringing the rights of others at the point of commercialisation.

Special considerations should be borne in mind when patenting nanotechnology as the field is relatively new and cross-disciplinary, and because materials at the nanoscale often behave differently to their bulk counterparts.

When searching prior art patents and other literature, it is important to bear in mind the cross-disciplinary nature of nanotechnology as patent records are classified according to technology. Searchers including patent examiners must be conscious that inventions may have applications in various disciplines beyond those described or immediately obvious.
Being a relatively new field, much of the literature on nanotechnology is relatively inaccessible to searchers, and prior art collections are continuing to develop. A search, whether conducted by a patent office or private firm, can only ever be as comprehensive as the indexed materials available to be searched.

The relative infancy of the field also results in a lack of standardisation in the technical meanings of terms. For example, the distinction between a “nanorod” and a “nanowire” may be considered unclear. Fully defining all technical terms used in patent claims can increase the certainty of their scope.

Claims to a product or composition of matter are common in patent specifications relating to nanotechnology. Functional definitions are often used to define novel properties in product claims, for example by reference to absorption peaks as indicators of colloidal particle size. Such functional language is usually acceptable in Australia. Other typical claim types include machine or apparatus claims, process claims and product by process claims.

In order to be patented, an invention must related to patentable subject matter and be both novel and inventive.

Subject matter
A mere idea or discovery, without a means of putting it into effect, is not patentable. The inventor must produce “either a new and useful thing or result, or a new and useful method of producing an old thing or result” to make a patentable invention. Although the technical applications of a nanotechnology invention may be broad or somewhat speculative, it is important that they are detailed to the extent possible in the patent specification.

Inventions in the nanotechnology field are often nanosized materials which are known in their bulk form. The question arises as to whether such nanosized materials can be considered novel. A patent claim is not novel if “each and every one of the essential integers” of that claim is disclosed in an alleged anticipation. Hence provided the patent claims specify a novel size range, in the likely event that the size range is considered an essential integer, the claims will be considered novel over the bulk material.

Inventive step
Downscaling of a known material also raises inventive step (or obviousness) considerations. Inventive step is assessed with reference to the notional “person skilled in the art”. In the multi-disciplinary field of nanotechnology, the relevant “person skilled in the art” may well be a team of people. An invention will lack inventive step if the notional research group would “directly be led as a matter of course” to try the claimed invention in the expectation that it might well produce a desired result.

Many materials possess unique properties at the nanoscale, where quantum physics comes into play and surface forces dominate. Furthermore, peculiar technical difficulties often arise when downsizing to the nanoscale. If these considerations mean that the notional research group would not have taken as a matter of routine the steps leading from the bulk material to its nanoscale counterpart, then the invention will involve the requisite inventive step. Where bulk equivalents are known, it is important to emphasise in the description the unique considerations that the inventors faced in downsizing to the nanoscale.

Concluding Remarks
The Australian patent law framework is well equipped to confer appropriate patent rights for nanotechology inventions. However, care must be taken by both patent attorneys and patent examiners to ensure patent specifications are appropriately drafted and examined.

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