“Patents in Commercialising Nanotechnology”
By Nick Fox-Male
Partner, Eric Potter Clarkson,
European Patent Attorney, Chartered Patent Attorney

I recently attended a conference on nanotechnology for new business and investors.

I am very pleased to note that the basic lesson as to the value of patents for investment potential had been learnt, in that many companies and investors highlighted in their presentations the importance of patents to them.

Also, they appreciated the important point that patent applications must be filed at the start of the development process, and certainly before any public disclosure.

However, a number of additional interesting and very important matters were raised in discussions throughout the conference.

Question: What are the major potential pitfalls concerning patent issues relating to commercialising nanotechnology?

The major obstacle to success concerning patents in commercialising nanotechnology developments is being ignorant of your competitor’s, or potential competitor’s, patent rights.

Thus it is essential to become aware of any relevant third party rights, and then take appropriate action to neutralise them.

One such action might be to take a licence on the technology or its application to your particular market niche.

Another possible action might be to consider ways of invalidating the patent rights, perhaps by looking at what prior art has been cited in corresponding patent applications elsewhere.

In any event, it is essential to take some appropriate action, and not to ignore the potential consequences of what has been found.

Question: What strategies on patents are there for successful commercialisation of nanotechnology?

It is important to use the patent system to your advantage - it is actually very flexible and can address a wide variety of objectives and requirements.

Thus, determine what you want, and then direct your actions in order to achieve it.

For example: do you want patent rights as soon as possible, in order to enforce patent rights in one or more particular territories?

Or, do you want to maintain broad territorial cover for as long as possible, and keep cost low for as long as possible?

Question: How would you achieve the second option, which is probably the one more relevant to commercialising nanotechnology?

Firstly, bear in mind that a patent lasts 20 years from initial filing – to put this in perspective, think back 20 years and consider the state of technology for personal computers in 1983.
Thus even for nanotechnology, 20 years is a significant time, allowing development of a piece of technology to a commercial form while still providing a reasonable period in which to attract a satisfactory, profitable return on the initial development costs.

Secondly, consider using the International patent application system, in order to take advantage of the considerable delay of 2½ years before it is necessary to incur the substantial costs of patent filing in many individual countries.
Also, at the end of the International phase, consider using the European Patent Office procedure which provides further multi-territory cost-effective patent cover.

Thirdly: create a patent portfolio, being a bundle of rights formed of basic patents, subsequent improvement/modification patents, licenced-in patent rights and know-how.
In this way, the resultant overall patents package has a rolling, continuing term of protection extending considerably beyond the 20 year period from the initial patent application.

Question: What is patentable in nanotechnology?

Any form of technical development in nanotechnology is potentially patentable, for example a material, a device, a measuring tool or a production method.
However, the development must be new and involve a significant technical effect.

Question: A start-up company says that it has a patent portfolio of, for example, three patents. What would be your comment?

While it is essential to know how many patents a company has, that information in itself is not very useful.

It is necessary also to establish at what stage each patent, or patent application, is in the process of obtaining enforceable patent rights in any territories.

Furthermore, it is necessary to gauge the strength, or otherwise, of the patent protection afforded by each patent.

Also, it is necessary to consider whether the patent addresses applications of the technology in other market niches.

Question: When should one consider any licencing aspects of the invention?

Right from the start of the drafting process for the patent application, it is very important for the inventors to be discussing with the patent attorney potential applications of the invention.

In this way, the patent attorney can ensure that appropriate provision is made within the patent for licencing opportunities.

Also, this issue should be reviewed regularly throughout the examination procedure, and thereafter during the life of the granted patent.