Patenting Nanotechnology

25 April 2011

Introduction and Genesis

Nanotechnology is a new technological frontier with exciting promise for new solutions in a wide range of fields. It essentially deals with controlling matter at sub-atomic levels. 'Nano' derived from Greek wherein it refers to 'dwarf' is taken in the scientific parlance as very small; one nano-meter is a billionth of a meter and in terms of the dimensions of known physical objects, it could be around 40,000 times smaller than the width of human hair.

'There's Plenty of Room at the Bottom', a talk given by Richard Feynman, an American Physicist (who got Nobel Prize in Physics in 1965) at American Physical Society Meeting at Caltech on 29 December 1959 is credited to have caught the imagination of scientists to focus their efforts on manipulation of matter at atomic levels. In his ground breaking lecture, Feynman considered the possibility of direct manipulation of individual atoms as a more powerful form of synthetic chemistry than those used at the time. Feynman's provocative talk of 1959 lead Eric Drexler to come out with his book, 'Engines of Creation: The Coming Era of Nanotechnology' in 1985 what later became known as 'molecular nanotechnology'.

The enormous interest in this field by the scientific community is not for a simple reason of being able to deal with the matter at sub-atomic scale but for the fact that most nano-particles have shown radically different and unusual physical, chemical and biological properties than their counter-parts as bulk material hitherto known to us. At the nano-scale, the laws of quantum physics take over and new physical properties emerge enabling exciting new applications. This grand opportunity of exploring the unknown and finding solutions to the known problems keeps the discovery wheel moving.

It has been reported that besides above developments the inventions of the scanning tunnelling microscope (US Patent 4,343,993) in 1981 and that of atomic force microscope (US Patent 4,724,318) in 1986 helped greatly to master the techniques to control and restructure matter at nano-scale; no wonder, therefore, these have been cited by thousands of other researchers. Other key inventions that are not yet off-patent are as follows:

Key Nanotechnology Patents

    US 5,747,161 (1991): Multiwall carbon nanotubes
    US 5,475,341 (1992): Integrating mol. & semiconductor electronics
    US 5,260,957 (1993): Quantum dot laser
    US 5,424,054 (1993): Single walled carbon nanotube
    US 5,773,921/RE 38,561(1995): Carbon nanotube electron emitter
    US 7,132,994 (1997): Carbon nanotube optical antenna
    US 6,891,744 (1999): Reconfigurable nanowire crossbar electronics
    US 6,740,910 (2000): Vertical nanowire field effect transistor
    US 7,321,188 (2002): Carbon nanotube yarn light source

Hundreds of nanotechnology-based products are commercially available today. A range of nano-material and nano-composites are finding applications in consumer products such as cosmetics, sunscreen lotions, stain-resistant clothing, car parts, and sports equipment as well as in drug delivery systems and photo-voltaic cells. Having enjoyed a phenomenal growth during the last two decades, the market for nanotechnology based products is predicted to be worth a trillion US$ by 2015.

Growth of Nanotechnology

As many as 60 countries have launched national programmes in nanotechnology with significant R&D budgets. Government of India has also recently launched a major initiative on nanotechnology, known as 'Mission on Nano Science and Technology' (nanomission.gov.in) with an allocated fund of Rs. 1000 crore (approx. 217 million US$) for 5 years. An online mechanism for project submission to seek funding has also been started since 1 July 2010; majority of projects submitted so far appear to be for establishing infrastructure for carrying out research in different areas nanotechnology even though the objectives of the mission are stated to be for development of products and processes for national development, viz., safe drinking water, materials development, sensors development, drug delivery, etc.

A recent study on trends in nanotechnology patents covering an analysis of 30 years of data on patent publications from the USPTO, EPO and JPO shows an exponential growth in nanotech patents since 1990 with a small drop around 2005 attributed to stricter definition of nanotechnology by USPTO and administrative delays in JPO. This global data and its growth trajectory confirms the dominance of multinational corporations like, IBM, Nippon Electric, Eastman Kodak, Micron Technology, Hewlett-Packard, Xerox Corporation, 3M Company, Rohm & Haas, Samsung, BASF, L'Oreal, Sony, Canon, Seiko Instruments, Matsushita Electric, Tokyo Shibaura Electric etc. Among the universities and scientific research institutions, University of California, Massachusetts Institute of Technology, Rice University, Japan Science and Technology Agency, CNRS (France), National Institute for Materials Science, National Institute of Advanced Industrial Science and Technology, the Agency of Industrial Science and Technology figure in prominently.

A study undertaken by NISTADS, a science policy research institute of CSIR in India has compared the nanotechnology publications vis--vis patents emanating from Indian institutions and industry between 1990 and 2007. Obviously, two different sources of these data have been taken for this study; scopus database (http://www.scopus.com) for publications and the delphion (http://www.delphion.com) for patent data. Using appropriate keywords as employed by domain experts, the study inferred that the unique publications (11,000) on nanotechnology from India outnumber the patents (167) with a wide margin during this period, though both show exponential growth in later years.

Another study carried out at the Georgia Institute of Technology in USA on the status of Indian patents in nanotechnology between 1996 and 2006 that sourced its data from the database of Micropatent quotes a number of 177 Indian patents as against 337 Chinese patents and 20000+ US patents. This study also compares the patent / 1000 publications and shows the Indian situation in a better light as compared to the Chinese statistic on this in view of large number of Chinese publications. It has been shown based on the distribution of IPC codes across the patent data from different countries, that while nanotechnology patents from USA is dominated by the field of physics, the same from India is dominated by the chemistry and metallurgical field. Major nanotech inventors from India have also been identified such as BM Choudhary, ML Kantam, KV Raghavan and Murali Shastri, all scientists from CSIR laboratories in India among others.

Another Indian Nonotech facility dubbed as 'Centre for Knowledge Management of Nanoscience and Technology' of the Hyderabad based International Advanced Research Centre for Powder Metallurgy and New Materials provides a concurrent list and trend of nanotechnology research publications emanating from India extracted from the 'Web of Science' (http://www.ckmnt.com/indian-publication-trends.html).

Treatment to Nanotechnology in Patent Offices

While the field of nanotechnology presents an unprecedented exciting opportunity for scientists to move on the discovery path, it also presents new challenges to deal with in the Patent Offices and in courts. These difficulties are due to several factors, of which the lack of experts with adequate domain knowledge in the offices dealing with patent applications is the chief. Since nanotechnology is essentially a multi and inter-disciplinary specialist field, the experts from conventional technical fields with necessary add-on knowledge from one subject area are not likely to be equipped to deal with nanotechnology applications from other areas.

The other difficulties are related to a precise definition of the term 'nanotechnology' and the comprehension of the 'nanoscale'. More often than not, the inventions in nanotechnology do not deal with precise dimensions of the size of matter but with a range. In the scientific research, while experts tend to regard a material belonging to nano-range, if the particle size is well below 30 nm; practically, however, a material with a particle size ranging between say 30 to 80 nm would still be regarded as nano-material. Patent Offices in US, Europe and Japan have, thus, already defined nanotechnology inventions in terms of scale as anything below 100 nm. For example, the EPO definition for 'nanotechnology' is defined as follows:

    "The term nanotechnology covers entities with a controlled geometrical size of at least one functional component below 100 nanometres in one or more dimensions susceptible of making physical, chemical or biological effects available which are intrinsic to that size. It covers equipment and methods for controlled analysis, manipulation, processing, fabrication or measurement with a precision below 100 nanometres."

Even with such uniform and simplistic definition, the situation could remain compounded when use terminology like nano-agglomerates which simply defy the above definition. The size deterministic definition of nanotechnology as adopted by the Patent Offices, however, has also been refuted by many experts as flawed. According to them many biological systems, e.g., virus etc. have sizes within the nano-range and have been known and in use even before the advent of term 'nano' and may be known in the prior art.

On the executive level, assessing the novelty of an invention in this emerging field is yet another major bottleneck since little prior art is generally available. When downsizing is claimed as the basis for a patent in nanotechnology, it is not often easy to conclude if the same would be obvious to the person skilled in the art. Size is, however, not a sufficient condition to establish the novelty of an invention. Nanoscale inventions are also expected to exhibit properties that are, in some measure, unanticipated otherwise. However, problems remain when nanoscale formulations of the materials from the prior art are presented with properties which are not entirely unanticipated.


Nanotechnology Patents in Legal Landscape

The situation with regard to nanotechnology patents in legal landscape tends to be as complex as in the Patent Offices. Appellate and courts are frequently faced with disputes of nano-particles of given range claiming in the realm of prior art that would destroy the 'novelty' of subsequent inventions. For example, in BASF v Orica Australia, a prior patent on polymer nano-particles larger than 111 nm was claimed to destroy the novelty of a subsequent application by Orica for nano-particles smaller than 100 nm. However, in the final judgement, it was upheld that Orica's smaller particles exhibited remarkably improved technical properties resulting into a better and glossier coat.

Another related problem most often confronted in legal disputes is the 'overlap of the range of particle sizes'. Going by strict interpretation of legal provisions, even the slightest overlap is sufficient to destroy novelty. However, exceptions have been liberally made with the objective of promoting inventions in this field. For example in a case of Smithkiline Beecham's patent application on a Hepatitis B vaccine adjuvant with particles measuring 60-120 nm in the light of similar prior patent of Wyeth with particles measuring 80-500 nm, the new invention was regarded as 'novel' for the following reasons:

  • the overlap of particle size was narrow - only 10% of the larger range in the earlier patent
  • exhibited significantly improved adjuvancy with smaller particles resulting into unexpected and favorable shift in immune response, and
  • technical teachings in the prior art were not sufficient to produce the product of the latter invention

As with regard to 'novelty', similar arguments with regard to 'non-obviousness' also abound but objective teachings of the prior art have often been relied in deciding about the patentability of new inventions. A proliferation of patents being granted for inventions falling within such overlapping ranges in nanotechnology is, however, supposedly leading to a chaotic situation of multiple "blocking" around the same or similar patents. Such patent thickets are believed to threaten innovation and adversely affect further development of the nanotechnology sector.


Searching Nanotechnology Patents

Patent searching for nanotechnology as in other fields can be accomplished with a combination of keyword text searching, patent classification searching, and citation analysis. The USPTO has established class 977 as a cross-reference art collection for nanotechnology searching. The EPO has established class Y01N as a cross-reference art collection for nanotechnology searching. The IPC has established class B82B a cross-reference art collection for nanotechnology searching. These cross-reference art collections are still new and many relevant documents remain undesignated. Extended search based on 'citations' is strongly recommended to uncover the hidden patents.

There are quite a few blogs on the internet that are good sources for recent patents and other information related to nanotechnology. A subscription based internet journal, 'Recent Patents on Nanotechnology' (http://www.benthamscience.com/nanotec/) publishes review and research articles by experts on recent patents on nanotechnology.

Cross-Reference Art Collection of USPTO

To help address the peculiar problem of classifying and searching nanotechnology patents, USPTO introduced a new Class '977' in 2004 which has since been expanded to an elaborate cross-reference art collection of 263 new subclasses (from 700-963). Thus it is now rather straight forward to search patent publications and granted patents in narrow areas of nanotechnology using the appropriate sub-class with 977 class. The complete list of sub-classes can be seen at the USPTO website (http://www.uspto.gov/web/patents/classification/uspc977/defs977.htm).

Since US is currently leading the nanotechnology developments and since US represents as most important market for products of nano-materials and nano-devices, patents granted by USPTO to assignees from different countries can be regarded as the strength of these countries in nanotechnology. As retrieved from the USPTO database through class '977' on date, the total number granted patents was 6484. Against this the patents granted to some of the other nanotech active countries are as shown below. We can see here that Japan is closely following USA in this technology race and other major countries are S. Korea, Germany, Taiwan, France and Canada.

    USA 1556, Japan 1169, S. Korea 317, Germany 222, Taiwan 176, France 118, Canada 110, UK 62, China 61, Netherlands 41, Italy 37, Switzerland 36, Sweden 34, Israel 32, Belgium 26, Australia 25, Singapore 16, India 14, Norway 13, Spain 13, Ireland 12, Denmark 10, Nertherlands 41, Hong Kong 5, Russia 4, New Zealand 3

Nanotechnology Patents in European Database

The European Patent Office world-wide database (Espacenet) of patents is another important source for patent retrieval. In fact, this is one of the most up to date and versatile source of patents that covers patent data from more than 80+ countries. Recognising the problem associated with searching prior patent literature, EPO introduced as early as in 2003 an internal tag of a label 'Y01N' in addition to usual classification codes signifying that the patents so tagged cover some aspects of nanotechnology. A detailed description of the evolution of 'Y01N' and its six sub-classes has been given in a paper published in World Patent Information (2006), please see the reference below. For public use, however, the European classification (ECLA) code 'B82' allocated to 'Nanotechnology' works quite effectively. As on date more than 100,000 results can be found in the European worldwide database for: B82 as the code in European classification field.

International Patent Classification for Nanotechnology

IPC codes which are maintained by World Intellectual Property Organisation (WIPO) are closely related to ECLA code of EPO. IPC code for Nanotechnology is thus also 'B82' with further sub-classification as follows:

    B 82 Nano-technology
    B 82 B1/00 Nano-structures
    B 82 B3/00 Manufacture or treatment of nano-structures

Approximately 1,992 results as on date could be found in the WIPO database for: B82 as the IPC code. Since IPC codes are also assigned by various Patent Offices besides WIPO to the patents published and / or granted by them, approximately 20,274 results could also be found in the worldwide database for: B82 as the IPC code. Despite elaborate cross-reference art collection for nanotech related patents as practiced by various Patent Offices, it must be borne in mind that these classification codes are still quite new and many could as well be undesignated. In an exercise of screening nanotech-related patents, one may use a key-word search (of the full-text or only certain sections of the patent document) in combination with search by classification (if the sub-class sufficiently defines the area of interest). To illustrate this point, one may refer to a US patent (6,316, 674) on 'Process for the preparation of acyl aromatic ethers' granted to scientists of CSIR from India in 2001 that utilizes nano and microcrystalline zeolite beta catalyst in this process. This has been classified in four sub-classes of '977' and cannot be missed when searched in USPTO database. But it does not yet have any ECLA/IPC code of 'B82' or EPO tag 'Y01N' can thus be located in EPO worldwide database only through other means e.g., number search or 'nano' keyword in 'Abstract' field.

Derwent World Patents Index

Derwent World Patents Index (DWPI) produced by Thomson Reuters Scientific,is another important value added service for searching nanotechnology patents. This database containes information from more than 41 million patent documents and sourced from more than 41 countries of the world. This services is now subscribed by all important scientific institutions, including the laboratories of CSIR in India and can therefore be utilised easily by the scientific community


Concluding Remarks

As with any new technology, there is an excitement and anxiety all over as to how relevant nanotechnologies will be developed, protected and commercialised. Processes are at work in establishing research infrastructures for developing new nanotechnologies, new adaptation in Patent Offices and Appellate Authorities to deal with significantly different infringement cases and above all within scientific communities to embark on a new discovery path. Nanotechnology is a special case as it applies to almost any area of science and engineering: it is just as relevant to biotechnologists and physicists as it is to electrical and mechanical engineers or materials scientists. All in all, however, it seems that the race has just begun!


Further Reading

  1. Patenting Nanotechnology: Exploring the Challenges, WIPO (April 2011)


  2. Chen, Hsinchun, Mihail C. Roco, Xin Li and Yiling Lin (2008) 'Trends in nanotechnology patents' Nature Nanotechnology, Vol 3


  3. Panda, Anit Kumar and V.K. Gupta (2008) 'Indian Publications and patents output in Nanotechnology' National Instititute of Science, Technology and Development (NISTADS):


  4. Bawa, Raj (2007) 'Nanotechnology Patent Proliferation and the Crisis at the US Patent Office', Albany Law Journal of Science & Technology , Vol.17, 699


  5. Scheu, M, V. Veefkind, Y. Verbandt, E. Molina Galan, R. Absalom, W. Förster (2006) 'Mapping nanotechnology patents: The EPO approach', World Patent Information 28, 204211

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