Patenting of Nanotechnology: An Analysis
An overview on nanotechnology
Nanotechnology can be broadly defined as a domain that deals with the engineering of matter at the scale of atoms and molecules. In nanotechnology, the size of a matter is measured in a billionth of a meter. The field of nanotechnology is also dedicated to studying the use of atomic, molecular, or supermolecular matter for industrial uses. Thus, nanotechnology is prevalent in several industries such as biotechnology, pharmaceuticals, robotics, genomics, and information technologies. The recent years have noted a stark increase in the number of patents filed for nanotechnology inventions. According to StatNano, as of 2016, the U.S Patents and Trademarks Office has published over 20,000 nanotechnology patents. Whereas, the European Patent Office has published over 4000 nanotechnology patents. However, the patenting of nanotechnology inventions is rather tumultuous and is plagued with several challenges arising from loopholes in the Indian patent regime and otherwise.
Common challenges in patenting nanotechnology inventions
Nanotechnology is a domain that is multifaceted in nature. It has established its prominence in several industries ranging from the pharmaceutical industry to the robotics industry. However, this multifaceted nature of nanotechnology has led to a rampant increase in broad patent claims, thus leading to the genesis of patent thickets. Most inventions in the field of nanotechnology serve multiple purposes. As a result, patentees may disclose broad claims in their patent applications. Most patent offices lack the capacity to distinguish between a generic claim and a non-generic one. Consequently, this contributes to the creation of patent thickets wherein nanotechnology inventions having overlapping claims are patented. Essentially, the lack of a uniform definition for terms related to nanotechnology has impacted the effectiveness of patents searches and classifications. The lack of a standardized definition may also increase the risk of relevant prior art being discovered through patent searches. According to WIPO, this may “heighten the risk of a nanotechnology patent being invalidated and of overlapping of conflicting patents being granted.” Lastly, several studies have noted a significant delay in the granting of nanotechnology patents in India. Until March 2012, the Indian Patent Office has managed to only grant approximately 370 nanotechnology inventions. This is primarily due to a delay in the IPO examination process conducted for granting patents. According to a study by the Rostrum’s Law Review, it is reported that the average time period taken to grant nanotechnology patent applications in India is 14 years (as of the year 1995). On the contrary, as of 2007, the average time taken to grant nanotechnology patents is 3.5 years. However, the average time period taken by the Indian Patent Office to grant nanotechnology patents has reduced over the years. During 1995-2012, the average time period taken to grant nanotechnology patents was 7.2 years.
Criterions for patenting nanotechnology inventions in India
Primarily, there are three criteria that are taken into consideration to patent nanotechnology inventions. They are Novelty of the invention, non-obviousness of the invention, and lastly, the industrial applicability of the invention. Firstly, it is pertinent to note that achieving a level of novelty when it comes to nanotechnology inventions is rather difficult. This is primarily due to the fact that nanotechnology is a nascent field wherein there is an accumulation of generic ideas that have led to a surge in patent applications being filed for inventions that are similar in nature. Therefore, in order to obtain a patent, it is imperative for the nanotechnology invention to be novel in nature. Moreover, there are challenges when it comes to analyzing if the reproduction of a generic product or structure on an atomic scale would represent an inventive step or meet the criteria for ‘novelty’. More specifically, if an invention exhibits certain characteristics at a nanoscale but fails to exhibit the same at a macro scale, it cannot be considered a novel invention. This implies that the size of an invention is not a determinant to establish novelty with respect to an invention.
Nanotechnology is a field that grows at an expedited rate. However, the scope and application of nanotechnology inventions are rather broad. In other words, most nanotechnology inventions “may be written across a broad range of applications”. Hence, it is pertinent to identify prior art that is related to nanotechnology inventions so that the chances of overlapping patents are diminished.
Thirdly, in order to patent a nanotechnology invention, the invention should have some level of industrial applicability. If a nanotechnology invention does not serve a practical purpose that may benefit an industry, it is unlikely to receive a patent. Developing a prototype or a mere structure of the invention that does not serve a utilitarian purpose is also unlikely to be patented.
Laws concerning the patenting of nanotechnology inventions in India
As per section 2(j) of the Indian Patents Act, it is imperative for an invention to be novel, consist of inventive steps, and serve a utilitarian purpose in order to be patentable. As per section 2(JA) of the Indian Patents Act, an inventive step is defined as a feature of an invention that comprises technological advancement over pre-existing knowledge. In other words, it should comprise an additional, novel feature that is derived from pre-existing knowledge related to the invention. Section 3(d) emphasizes that an invention is non-patentable unless “the new form of the substance exhibits improved efficacy of that substance already known”. It is pertinent to note that section 3(d) of the Act restricts the patenting of “particle size” inventions. However, this section has posed significant challenges when it comes to the patentability of nanotechnology inventions. This is primarily due to the fact that there exist no standardized definitions of the word “Nano” or “Nanobiotechnology”. In a domain like a nanotechnology, the novelty and efficacy of an invention is derived from the reduction in size. Typically, Nano refers to inventions that are 100 nm in size or less than that. However, fixing a size limit of 100 nm may significantly restrict the patenting of particles that do not conform to this size.
In conclusion, nanotechnology is a domain that has great potential to facilitate innovation in several industries. Currently, Indian patent laws are largely unaccommodating of nanotechnology patents. This is primarily due to the fact that there exist vague definitions and standards related to nanotechnology which impedes IPOs from granting patents. Thus, major amendments in the Indian patent regime with respect to nanotechnology inventions can significantly and positively impact the patenting of nanotechnology inventions in India.