NANOTECHNOLOGY PATENTS: CHALLENGE FOR INDUSTRIAL PROPERTY AND ITS REGULATIONS
Patents usually make it possible to measure the results of the incorporation of new technologies in society. In the case of nanotechnology, it has given rise to a huge number of potentially innovative ideas, however, as in many other cases, technology advances faster than the legal framework that covers it.
The US National Institute for Human Genome Research defines nanotechnology as a science where various elements are manipulated at the atomic scale in order to solve difficult problems to solve on larger scales. This developing science has useful applications in different areas of scientific interest, for example: in the environment to facilitate water desalination or soil decontamination, in renewable energies to improve its production and storage, in medicine for the development of drug nanotransporters to specific unreachable parts of the body, etc.
According to Conacyt (National Council of Science and Technology), Mexico ranks second in Latin America in the ranking of the countries with the largest initiatives, research projects, infrastructure, and the number of nanotechnology publications. Various reports indicate that more than 56 institutions and 159 national laboratories are dedicated solely to the research and dissemination of this science. The growth in productivity, development and investment in this field forces the industrial property area to ask questions regarding the registration of these new technologies. Like any other science that was once in development and challenged the paradigms of industrial property to make changes to its laws and processes, the nanotechnology registry is already beginning to raise questions to industrial property.
According to the World Industrial Property Organization (WIPO), one of the most important questions has to do with the size of the technology that will be registered. For example, if there is a very similar technique at larger levels, such as the atomic level, would it be valid to record the nanometric technique? If not, how would scientific institutions protect their nanometric technologies that differ in efficiency and results with processes? existing at larger levels? Another important aspect to consider is whether the current terms, such as “nanoscale”, that are used in patents are the specific ones to distinguish one technology from another.
Nanotechnology is probably forcing us to be more specific in the use and registration of these processes, otherwise the claims of a patent application could be confusing and vague for the creators of these technologies. While it is true that nanotechnology is a new field and therefore it can be argued that there is not a sufficient state of the art to comply with the legal framework of industrial property, WIPO is already working to see what arrangements are in place for the current legislation on patents can help address these new challenges. It is of utmost importance for the industrial property sector to anticipate these challenges that come with nanotechnology and its registration, to avoid difficult legal conflicts to resolve.
That being said, not only the definition “nanoscale” brings ambiguity, words like “nanotechnology” and “nano-agglomerates” also bring with them a certain level of uncertainty as many corporations in the industrial property sector use them differently, making it impossible to create uniformity. and consensus regarding the use of these words. According to WIPO, this “lack of standard definitions” can have a significant impact on the classification of patents and on the monitoring of its evolution. In worse cases, this inconsistency may cast doubt on the patentability of technologies, since if we consider that one of the patentability criteria is that of inventive step, which establishes that the invention must not be evident from the state of the art for an expert in the matter, the criteria could not be valid since it could be argued that the terms such as “on a nanometric scale” are sufficiently ambiguous so that the person skilled in the art can interpret it without uncertainty and therefore validly rule whether the inventive step is fulfilled or not.
To avoid these potential problems, the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the Japan Patent Office (JPO), which are the main offices that register nanotechnology patents currently, they have decided that any invention of nanotechnology must operate on a scale less than 100 nanometers. Thus, patent applications submitting measurements with different nanometer arrangements are excluded. This consensus of the most important worldwide patent offices in this matter makes it possible to give uniformity and structure to the nanotechnology patent applications registry.
As mentioned at the beginning of the article, nanotechnology has various applications across very different fields from each other. This feature of the field is beneficial because for the diversity of processes that it can help; however, it can be a problem for industrial property experts. Typically, patent applications are assigned to experts in the field to determine their patentability by evaluating the invention. However, this is not feasible in the field of nanotechnology due to the wide range of areas that its inventions can cover. WIPO states that it is unlikely that a single expert can adequately assess whether or not the application meets the patentability criteria.
Beyond the fact that patent offices need to spend more monetary and human resources to evaluate such applications for the simple fact that more experts in the field will be required to review the patentability of an application, the problem of multidisciplinary can make that the risk of improperly evaluating the “pertinent state of the art” or “inventive step” increases, since the application evaluators may not be exactly experts in the matter; for example, pharmacology experts may evaluate nanotechnology applications that have to do with distributing drugs in specific parts of the body, however, experts may not necessarily have the necessary experience to rigorously evaluate a pharmacological invention related to nanotechnology. This problem can be aggravated later when patents that do not meet the standard are granted and later canceled in court.
Problems with nanotechnology in the field of industrial property increase when nanotechnology inventions contain similar formulations of previously disclosed and patented structures, compounds, and materials. The most controversial example of this problem was the BASF case against Orica Australia, where it was disputed that previously registered BASF polymer nanoparticles of more than 111 nanometers nullified the novelty of particles less than 100 nanometers that Orica was trying to patent. The courts of the EPO, however, determined that the Orica particles were novel since they presented improved properties such as the brightness of their surface. This difference was considered sufficient to validate its novelty. This case invites us to reflect on the complications of deciding whether or not a patent application is novel to nanoscales. Firstly, the difference in size of the different techniques has never been enough to say that they are both novel. Then, we must remember that in the history of intellectual property, the slightest coincidence with previous techniques may be enough to nullify the “novelty” character of an application. Considering these implications, we can see how nanotechnology is already beginning to challenge the criteria established in industrial property.
When drafting the claims of a patent related to nanotechnology, the technical and legal variables that help ensure a good probability of granting should be considered, especially taking into account that different Patent Offices worldwide interpret the principles that govern the law of patents in different ways, which can affect the patentability of an invention.
Specifically, and in the case of Mexico, when processing and defending patent applications from this technological branch, it is advisable to treat and negotiate the respective objections of the examiners before the Mexican Institute of Industrial Property (IMPI), always striving to achieve multidisciplinary interviews with all the examiners, thus achieving, convening and bringing together examiners from various areas of technical knowledge, in order to achieve a comprehensive and clear understanding of the entire invention in question, which will help to address the objections issued from various technological fronts, thus achieving an agile grant and that includes the main novel and inventive characteristics of the corresponding patent application.
One of the tasks for the future, for all actors involved in and related to nanotechnology, will be to encourage and foster sustained and continuous innovation in nanotechnology, ensuring that the associated intellectual property system grants certain, consistent and broad freedom to innovators. so that they can work and develop new nanotechnological applications, avoiding at all costs any problem, technical or legal, that affects the incentives for the disclosure of patents, investment in them and at the same time creating a legal environment that helps the holders to promote litigation cases that weigh and cover all the technical aspects associated with each case.
The cycle of science revolution occurs when established and evidence-based paradigms begin to be challenged and refuted by new technologies. Later, science goes through a stage of uncertainty in which scientists and experts in the field seek the new paradigm to guide their research and discoveries. In the end, the revolution is consolidated when new paradigms are found and adopted by scientists. In the same way, industrial property seems to have entered this cycle of revolution in science. While it is true that industrial property laws cannot be fully rebutted, uncertainty is already beginning to be found in the way of processing, evaluating, and handling applications and patents related to nanotechnology. Following the course of the cycle, it would be prudent to wait for the new modifications that the intellectual property organizations will make to their respective laws in order to give stability to the experts of the field in the way of processing and patenting the nanotechnology techniques.
By Manuel López and Margarita Guerrero