Articles
Wim Helwegen: Intellectual Property Issues in Nanotechnology
A big technological breakthrough as such is no guarantee for a commercial success. Several issues that can easily be overlooked in a research oriented environment need to be taken care of in order to have a reasonable chance of a successful commercial exploitation.
One of the main elements that determine the commercial success of an invention is the protection of the intellectual property (IP). A well-structured and enforced IP policy can provide a potential to recoup investments in a certain technology and maintain a competitive advantage towards competitors.
The most common method of IP protection in advanced technologies is patents. A patent is nothing more or less than a 20-year monopoly on non-private exploitation of the inventive product or process for which the patent was granted. When an infringement of the patent right is suspected or observed the patent holder can take legal action against the alleged infringer. However, one has to realise that the grant of a patent is not a guarantee for a 20-year monopoly, patents are presumed valid, but can be invalidated by a court.
Because monopolies as such are generally undesirable, a patent application has to meet a number of requirements before it can be granted. Among those requirements are novelty, inventive step and industrial applicability. Put shortly, novelty means that an invention may not have existed before. The European Patent Office applies an extremely strict novelty requirement that prohibits any public appearance of the invention. Mentioning the invention in a casual conversation to any person can theoretically destroy novelty, and thereby the possibility of patent protection. Inventive step means that an invention must display a degree of creativity in the sense that the invention may not be an advancement of technology that a person skilled in the relevant art would have deemed possible.
Novelty and inventive step play an important role in today’s nanotechnology patent landscape. A surge in the number of patent applications on nanotechnological subject-matter has led to large numbers of granted patents. Moreover, some of those patents concern very broad monopolies on certain inventions. The combination of those two circumstances leads to a high risk of unintentional patent infringement. Areas burdened by high numbers of patents and broad patents are e.g. carbon nanotubes and quantum dots.
Given the at times extremely high costs of patent litigation, it is important to get a clear view of the patent landscape in a certain field of technology before engaging in substantial research efforts that aim for commercialisation. Websites such as ep.espacenet.com, www.google.com/patents and www.freepatentsonline.com can prove to be valuable tools for getting a first impression but given the highly complicated nature of patents and their scope it is recommended to consult a patent attorney at an early stage in the research process. For example, if a competitor holds a patent that claims a material within a certain size range, it might still be possible to obtain a patent for the same material that falls within the patented size range if very specific legal requirements are met.
When applying for a patent, a full disclosure of the invention and the underlying technology is required by law. All the information will be available in publically accessible patent databases. Since competitors may actively monitor these patent databases, applying for a patent may not always be the most desirable option. In some cases, trade secrecy might be a better choice. The main advantages are that trade secrets have a potentially indefinite duration and no disclosure of information to competitors is required. A disadvantage is that when revealed, no legal action can be taken against third parties that use the secret. Because inventions in nanotechnological inventions can often be concealed, trade secrecy can serve as a viable alternative to patents when protecting IP, especially the life expectancy of the product or process has a potential that is substantially longer than the 20-years of protection that a patent can provide.
Although the costs of trade secrecy are less obvious than in patents, they can still be very high. Trade secrecy requires a strict policy that should be determined in close cooperation with a legal counsel and requires a significant effort in terms of internal procedures and the paper trail that it will leave.
Finding the right IP protection for your invention requires a delicate balancing of many factors. Do not hesitate to call in a patent professional at an early stage, although this may require substantial resources it may very well be make the difference between a commercial success and a failure.
Wim Helwegen
Researcher – IPR University Center
Doctoral candidate – University of Helsinki
Disclaimer
The text provides a basic and general impression of certain IP issues that can arise when commercialising (nano)technology and is not intended to be, and may not be considered, a legal advice.