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PATENTING NANOTECHNOLOGY- THE CHALLENGES POSED TO THE INDIAN PATENT REGIME.

Kirthi Jayakumar
INTRODUCTION:
The Indian patent regime, originating from as early as 1856, has morphed into one of the most
competent mechanisms of the modern era. Having been subject to remodeling and amendments
of sorts since its inception, the present Indian Patent Act stands fulfilling nearly all the
requirements clamped down by the globalized patent regimes, as encapsulated in the TRIPS
mandate, as also the Patent Co-operation Treaty, 1970.

A patent refers to the protection accorded to any new and useful invention. The quintessence of
the Patents Act lies in the norms laid down, to be satisfied in order for a patent to be granted for
an invention. The invention should be novel, should involve some inventive step, and should
possess some degree of industrial applicability. Filing of applications, framing provisional and
complete specifications, redress of infringement grievances, grant of compulsory directions,
secrecy directions and revocation of patents, among several other minor topics are found within
the gamut of the Indian Patent Act. In tandem with the changes in society, an operative change in
technology has been witnessed. As newer avenues emerge, Science unfailingly throws challenge
after challenge in the path of law, as each new mechanism knocks on the doors of the Intellectual
Property system, seeking protection therein. Protecting some of these technologies are often grey
areas in the Indian Patent system. One such avenue, which has kicked up much consternation, is
the field of nanotechnology.

The factor that makes nanotechnology unique is that it uses a process distinct from that of
traditional forms of technology. Most top down manufacturing processes take the help of
the top down process wherein larger blocks are broken down into smaller ones. There are two
main ways of applying nanotechnology so far: one is the top-down approach, whereby structures
are made smaller and smaller until they reach a nanometre scale using larger elements. The other
approach is the bottom-up approach, by which elements at the Nanoscale are chosen and
assembled to form some sort of matter or mechanism. This way of manipulating matter at the
atomic level obviously bears the potential of enormous developments.1

Why nanotechnology? The extent of the scientific demand and commercial worth of the branch
of science pertaining to nanotechnology warrants an examination into the feasibility of the
present patent regime in protecting the inventions arising in the aforementioned branch of
knowledge. Between 1997 and 20022, the quantum of nanotechnology patents had increased by
an astounding 600%. World over, patent offices are clamoring to develop methods to deal with
nanotechnology. The subject encompasses a plethora of other disciplines within its gamut, such
as chemistry, biology, physics, computer science, material science, engineering, medicine and
even electronics.3 It becomes imperative that a completely new paradigm be explored, to cull out
effective patent protection mechanisms. The grey areas, phrased in the form of questions include
the following:

Can these products be patented at all?

Khanijou Siddharth, Patent Inequality?: Rethinking The Application of Strict Liability to Patent Law in the
Nanotechnology era. 12 Journal of Technology, Law & Policy (2006) 179,181; Zovko Nicholas M,
Nanotechnology and the Experimental Use Defense to Patent Infringement 37 McGeorge Law Review 129,131
(2006).
2
www.uspto.gov
3
Sanjay Pandey ,Patenting Nanotechnology in India http://www.intelproplaw.com/Articles/cgi/download.cgi?
v=1125360993

Are these products and processes obvious, granted that molecular drugs and bulk metal
catalysts are known elements?

Can the Indian patent Office do the needful with regard to protecting nanotechnology?
The promises of nanotechnology are large.4 Given what is at stake and the high

expectations put on the burgeoning industry, it is imperative for the current patent doctrines to
effectively respond to new technology.5 Nanotechnology investors face uncertainty about the
extent of their patent rights.6 Patents with broad claims, that lack reference to scale, on traditional
products, might allow traditional patent holders to exact royalties from their nanoscale
counterparts. Furthermore, bargaining between the traditional and nanoscale manufacturers
might break down because of the diverging valuations that the parties place on their assets. In the
course of this essay, I shall be putting across a brief perusal of nanotechnology and its essentials,
the challenges to the patent regime and the suggestions for a change in the situation.

NANOTECHNOLOGY- Learning the Ropes


Nanotechnology the technology of the smallest objects is slowly but surely progressing. The
first products making use of nanotechnology are appearing on the market, amongst others: tennis
racquets, ski wax, and sun burn crme. 7 The European Patent Office has granted about 80,000
patents on inventions in the field of nanotechnology. Hitherto, European academic literature has
had hardly any attention for the patenting of nanotechnology. This is remarkable in view of the
fact that nanotechnology raises new and important questions of law, as well as questions relevant
for the development of nanotechnology industry in Europe. Well-known examples of
4

M.S. Roco & W.S.Bainbridge, Societal Implications of nanoscience and nanotechnology, (2001)
Andrew Wasson ,Protecting the next Small Thing- Nanotechnology & the Reverse Doctrine of equivalents
(2004) Duke Law & Technology Review 10)
6
Ethics of Nanotechnology @ the frontline- (19 SCC &HT LJ 481,8487 (2003))
7
Decision T12/81 BAYER/Diastereomers [1979-85] EPOR Vol B 308 (at 312).
5

nanotechnology are nano-carbon tubes and bucky-balls for making extremely rigid constructions,
quantum dots which can be applied as markers for labeling purposes, and dendrimers that may
be used for drug delivery purposes. The EPO defines nanotechnology as follows:8
"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 to make
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."
The general definition is that Nanotechnology refers to the science, building, visualizing and
manipulating at the nanometer scale.9 Put simply, nanotechnology is the science and technology
of building things from the bottom, upwards- one atom, or one molecule at a time. 10 It stands to
be the diametric opposite of traditional industrial technologies, which operate from the top,
downwards. Raw materials in quintessential forms of traditional industries are broken down and
machined into precisely crafted products, by removing the unwanted segments of the same 11. It
was introduced by Richard P.Feynmann, a 1965 Nobel Laureate, in a lecture entitled Theres
plenty of room at the bottom12 However, this method differs greatly from natural processes in
one way or the other. Every object on earth consists of molecules, cells and miniscule organelles.
Based on the particular configurations, a construction of these molecular structures can create
objects of astonishing size, like the coral reef, or a redwood tree, or even the human brain. This
approach produces results which would normally seem impossible. It is often seen that these
processes are taken for granted. A simple example for this is the human body. It begins as a
single cell, but evolves into a mature human being consisting of 75 trillion complexly arranged
8

http://www.epo.org/focus/issues/nanotechnology.html, accessed in May 2008.


J.M.Perkel, Nanotech Dreams, [vol.16.no.5, pg 34 to 36 (2002)].
10
Glenn Harlan Reynolds, Nanotechnology and Regulatory Policy- Three futures 17 Harvard Journal of Law &
Technology 179.
11
Eric Drexler, Nanotechnology Summary, (1990, Encyclopedia Brittanica)
12
www.zyvex.com/nanotech/feynman.html
9

cells. The molecular machinery responsible for this amazing, feat of production is capable of
such results because it performs operations in parallel. This process, thus, serves as a kind of an
existence proof for nanotechnology. Of course, putting these natural molecular machines to
work is in effect, nothing new, as every living being does so constantly.
But, where nanotechnology differs is, in the fact that it attempts to transcend the realm of the
natural. Full fledged nanotechnology successfully exercises complete control over the physical
structure of the matter, akin to what is done by a word processor over the form and content of
textual matter.Using nanotechnology, production would be carried out by large numbers of tiny
devices, operating in parallel, in a fashion similar to molecular machinery already found in living
organisms. These nanodevices wouldnt have to be made out of protein or other substances
extractable from the natural environment, but can be constructed out of whatever fashion is most
suited to their task. Popularly known as assemblers, these miniscule devices would be capable
of manipulating individual molecules rapidly and precisely. Instead of weaving cloth this method
would seize individual atoms using selectively sticky manipulator arms, and then plug those
atoms together until chemical bonding occurs. By repeating these steps according to a
programmed set of instructions, a nanotechnologicial approach would be able to synthesize
materials faster, and at a lower cost.
Besides such efficient and powerful manufacturing capabilities, there exist more sophisticated
applications. For instance, specially designed nanodevices, the size of bacteria might be
programmed to destroy arterial plaque, or fight cancer cells, or repair cellular damages caused by
aging.13 Finishing with these tasks, the element shall be induced to self destruct, or remain in a
surveillance mode, or cause, in some cases, to integrate with the body cells itself.

13

Eric Drexler, Unbounding the future, (1990, Encyclopedia Brittanica)

In addition to treating diseases, the technology would be exceptionally useful in producing


drastically enhanced mental, physical and sensory abilities. Substantial changes in human
morphology would be possible, and even copying thoughts and memories, and actually storing
them, would soon be reality, thanks to nanotechnology.
PATENTING NANOTECHNOLOGY: Challenges posed to the Indian Patent Regime
Even though many patents on nanotechnological inventions have been granted, little has been
written about how easy or how hard it is to obtain nanotechnology patents and which problems
and peculiarities an applicant encounters. Therefore, the patentability of nanotechnology is here
discussed in more detail. The analysis of nanotechnology patenting is a necessary input to the
more fundamental questions concerning the patenting of nanotechnology.
A patent is granted for any invention, based on any kind of a technology as given under A.27 of
the TRIPS agreement, as long it satisfies the norms of novelty, inventive step and industrial
application. Emerging technologies present newer challenges in the path of granting patents. The
challenges posed are one too many to discuss in entirety, but a select few, in pertinence with the
Indian patent regime are thus dealt with:
A. The nature of the technology itself
The TRIPS agreement mandates that patents shall be accorded to inventions based on any
technology, whatsoever. However, it is unfortunate that India lags behind in this regard. The
Indian patent regime is not accommodative towards the idea of granting patents to inventions in
the field of biotechnology, and nanotechnology. The need of the hour is to patent these
inventions, as the threat of infringement is imminent, particularly on account of the usefulness of
the invention.

Nanotechnology is not confined to a single field of endeavour but exploits the peculiar properties
of matter at the nano-scale level, across a plethora of areas in modern engineering. It dabbles
with fields such as semiconductor design, biotechnology, materials science, telecommunications,
and textiles, even though the patent is held by a firm that works in only one of these industries.
Emerging technologies have always been at daggers drawn, with the issue of patentability. Huge
amount of patents are being filed for already patented inventions, with the only difference being
that they are mere improvements in that field. In the past when the software boom captured the
commercial arena of technological use the patents were not allowed for software developments. 14
Biotechnology was also not considered as patentable and many of the inventions therein were
ineligible for patenting as they involved the human body, by virtue of the fact that they dealt with
the human body. This trend had changed after the case of Diamond v Chakraborty.15 Here, a
genetic engineer Ananda Mohan Chakraborty had developed a bacterium capable of breaking
down crude oil which is proposed to treat in oil spills. Initially, the patent was rejected
however subsequently the Supreme Court in a majority opinion held that a live human made
micro organism is a patentable subject matter and is a manufacture therefore patentable under the
Act and it was further observed in this case that any thing under the sun can be patentable.
The World Intellectual Property Rights Organization (WIPO) identifies certain complexities
regarding nanotechnology. One problem, which is, to a certain extent, shared with a number
of other emerging technologies is that the granted claims are overly broad, due at least in part
to a lack of available prior art, which could allow patent holders to lock up huge areas of
technology. In this context, there is also a perceived risk of overlapping patents.
B. Lack of technical knowledge

14
15

Lemley Mark A, Patenting Nanotechnology, 58 Stanford Law Review 601,605 (2005).


447 U.S 303(1980).

Few individuals are equipped with sufficient knowledge with regards to nanotechnology.
Knowledge driven economies like Europe and the USA have also expressed their inabilities with
regard to the subject.16 India isnt far behind, where this issue is concerned. This lack of
knowledge and understanding would hamper the advancement of the field. Either patents may
simply Not be issued altogether due to the lack of knowledge, or, the construction of claims and
their scope would be put through indiscriminate questioning because the examiners fail to grasp
the nuances of the invention altogether. Another consequence of the lack of knowledge is that the
patents granted would be far too wide, or too loosely defined, making it difficult to enforce the
granted patent. The Indian patent offices are not equipped with the individual and organizational
structure, to deal with nanotechnology. While information on different technology branches are
made available to the patent offices, there is next to nothing on nanotechnology. Conquering
ignorance in the field of nanotechnology is a major challenge to the Indian patent regime.
Further, the gamble of not knowing the utility of an invention is a major challenge to the Indian
Patent Regime.
C. Novelty and Identifying Prior Art
The broad scope of nanotechnology arises on account of the fact that manipulation of materials
or particles at the atomic level applies to a wide array of fields. This multi-dimensional feature
causes the identification of previously distinguishable technological fields. Identifying prior art
itself, is a tedious task, posing another challenge to the Indian Patent Regime. This is especially
so in the case of nanotechnology. The absence of a proper prior art database is the major
drawback in the Indian patent regime.
Since the crux of nanotechnology vests mainly on the size factor, a number of size related
questions arise: how do nanoscale inventions relate to prior art that does not specifically relate to
16

Worries on IP, Editorial, The Electronic Engineering times, UK, March 2002

a nano size? Could such prior art anticipate a nanoscale invention? Could prior art that refers to
micro or larger scale take away the novelty of a nano scale invention? Is size alone enough to
confer novelty upon an invention? What happens if size ranges mentioned in a prior art
document and a nano scale patent application overlap? An invention is only anticipated if it has
been described completely and inclusive of all its elements in the prior art. If the prior art refers
only to the micro or larger scale the nano scale equivalent is generally not anticipated.
Novelty is evaluated against the available prior art. The multidisciplinary nature of
nanotechnology results in the bridging of different fields of application, which makes it difficult
to cull out the element of novelty altogether. Since novelty depends on the extent of prior art, it is
necessary for a strong database of prior art. The Indian patent database ought to be made
stronger. Akin to the Traditional Knowledge Database (TKD), there ought to be one with fully
updated information, pertaining to nanotechnology, in India.
If the prior art does not refer to size, could it be true that a nano scale invention can be
anticipated? Is the novelty of the nano scale invention destroyed simply because it is covered by
the terms of a prior art document? This is not necessarily the case. In the first place, the prior art
is destructive of novelty if it contains an enabling disclosure. Even if a nano scale invention is
covered by the terms of a prior art document, it may still be novel if the person skilled in the art
cannot practice the invention without knowledge of the claimed invention or engaging in
inventive activity. If it is not clear to the person skilled in the art how to manufacture a nano
scale variant of the prior art invention, this could well be enough to preserve the novelty of the
nano scale invention. While the patentability of nanotechnology invention can be questioned in
certain cases, the existing patent law framework gives enough inroads to confer novelty upon

most nano scale inventions. This mainly derives from applying well-known patent principles to
nano scale inventions.
D. Inventive Step:
An invention must involve an inventive step, making it non-obvious to a person skilled in the art.
Even if a nanoscale invention is novel over the prior art, the inventive step requirement must be
met. The first question one would ask is as to whether in nanotechnology inventions, downsizing
in itself is not an obvious step for the person skilled in the art to take. From the decision of the
Technical Board of Appeal, USA in case T 0070/99 (about micro scale analytical devices), it can
however be derived that mere downscaling does not give rise to an inventive step.
On what grounds, then, could one deem the existence of an Inventive step in a Nanotechnology
invention? An inventive step may reside in the fact that other processes have to be used to arrive
at the nano scale products than is the case with bigger products. The other processes must of
course not be obvious to the person skilled in the art, confronted with the problem of producing
at nano scale.
If there is an unexpected function at the Nanoscale, it could be construed as an inventive step.
The crux is that the unexpected function must solve a problem stated in the patent. Such
unexpected results have been known to occur in nanotechnology. Carbon nanotubes can, for
instance, depending on their construction, carry a much bigger current per surface unit as
opposed to traditional metal conductors. The unexpected function must not be a mere side or
bonus effect. If there are good reasons for a person skilled in the art to go down the road of the
invention, then the occurrence of the unexpected bonus effect does not contribute towards
inventiveness.
E. Industrial Application:

For an invention to be patentable, it must be capable of use in any kind of industry. Since
nanotechnology is still in its infancy and many applications have not progressed beyond the
laboratory stage, one couldnt possibly fathom the extent of plausible industrial application. The
nature of nanotechnology inventions often points the way to their industrial applicability:
nanotubes for making light and strong constructions, nano drug delivery systems, or
nanotechnology used to create high electric conductivity are self-evidently industrially
applicable. In India, the problem that nanotechnology presents is that it is a technology that is
completely unknown and presents a picture of potentials that are yet to be explored. The IndoUS joint forum on science and technology has identified this area of intense cooperation.
F. Enablement Issues
The patents act requires an inventor to disclose the best way of manufacturing his invention, to
enable a person skilled in the art to do the same, post expiry of the patent. A major problem
posed by nanotechnology to the present patent regime, is that the scope of the invention and the
field of knowledge itself is far too wide. Expressing and explaining the contents of the invention
in full detail is next to impossible. The quintessence of the criterion of sufficiency of disclosure
is thus encapsulated:
1. That the invention is disclosed in a way that allows it to

be

practiced, and
2. That the (teaching of the) invention must be reproducible.
The first requirement implies that the person skilled in the art on the basis of the disclosure can
rework the invention without an undue burden. Reproducibility indicates that the result of the
invention can be reached over and again and not just on the basis of chance or only with a
smaller or larger degree of predictability.

If the examining or opposition division has no way of knowing or inferring the practicability of a
nanotechnology invention, let alone its practicability across an entire range, it may very well
require the patent applicant or patentee to beef up its disclosure and provide more detailed
instructions for the reworking of the invention. Additionally, the fact that the invention produces
the claimed results in a repeatable way may pose problems for nanotech inventors. In
nanotechnology, analytical methods, tools and metrologies are often not available to the person
skilled in the art. Without these the reproducibility of an invention may be difficult to ascertain.
An inventor would thus be obliged to disclose these in the patent in order to make his claims
verifiable.17
SUGGESTIONS- The measures to allow the patent regime to rise to the challenges
Till date, India has been very laid back in terms of research and development in the field of
nanotechnology even though research and development and the possible commercial
benefits of Nanotechnology are clear to all. The possible reasons for the same could be that at
the moment the true characteristics and use of the technology has not been properly
understood. The other reason is that even though the Indo-US civil nuclear deal is one of the
most important steps for the energy requirements of India, but the government has been so
busy in formulating policies and rules on this technology that little attention is being paid to
other technologies. The patent if properly granted facilitates more and more innovations in the
field to which the invention belongs however the growth retards once the patents are
wrongly granted or rejected.
At present the Indian Patent Act has no provision that even incidentally touches the field of
nanotechnology. There have been no guidelines or regulations framed with respect to regulating

17

D.S. Almeling, Note: Patenting Nanotechnology: Problems with the Utility Requirement, Stanford Technology
Law Review 2004, N1, at page 14.

this technology even though the TRIPS agreement specifically

provides that intellectual

protection must be extended to all fields of science so that it encourages more research and
innovations. The need of the hour is to firstly formulate a plan for increasing the research and
development in the field of nanotechnology, secondly to provide for funding and special
incentives for research in this field. One of the methods or possible solution to the present
problem of patenting Nanotechnology can be addressed by bringing amendments in the Indian
Patent Act that may not be exhaustively directed to nanotechnology however they must
have some mechanism to recognize the field of nanotechnology and formulate a
comprehensive regulatory plan that deals with Nanotechnology providing for research,
possible hazards and a framework for regulating the same.
Sweeping changes ought to be brought, in the Indian Patent Regime, to rise to the occasion, and
take on newer technologies with ease. A few of these suggestive measures may be put to use for
the same:

Patent applications are to be examined by a team of examiners, as opposed to a single


examiner, as multiple inspections would prove better in understanding the claims

Creation of a database of prior art, akin to the Traditional Knowledge Database.

One single organized and centralized command centre must be established, for the sake
of nanotechnology patenting. This would ensure uniformity in patent claim
interpretation.

Training to personnel on a periodical basis would help meet the challenge of lack of
information on the subject.

Creating expanded prior art databases would be prudent mechanisms to help ascertain
the elements of novelty and inventive step.

The patent offices must be open to accepting wider claims as the case shall prove, in
order to accommodate technologies in their nascent stages.

CONCLUSION:
Nanotechnology will be an important part of our lives, providing us with the ability to do things
on an atomic and molecular scale. To succeed as a business, companies that develop new
discoveries and uses for nanotechnology will need patent protection. With a carefully developed
patent strategy, the Indian Patent Regime can successfully rise to the challenge thrown in by
Nanotechnology. Though the grey areas are numerous to count, the same should not act as a bar
to the grant of patents to the inventions arising out of nanotechnology. Laws are enacted for
society, by society, and works in society. It would be unfortunate to allow our legal systems to
remain redundant, while science and technology take giant leaps. Science depends on law, to
protect its new creations. A development in law, is thus, not too much to ask in the light of an
advancement in Science.
BIBLIOGRAPHY

Unbounding the future Eric Drexler

Worries on IP- the Electronic Engineering times, UK, March 2002

Nanotech Dreams- J.M.Perkel [vol.16.no.5, pg 34 to 36 (2002)]

Nanotechnology and Regulatory Policy- Three futures Glenn Harlan Reynolds, (17
Harv J.Law&Tech 179)

Nanotechnology Summary- Eric Drexler (1990, Encyclopedia Brittanica)

www.zyvex.com/nanotech/feynman.html

www.uspto.gov

Patenting Nanotechnology in India- Sanjay Pandey


Societal Implications of nanoscience and nanotechnology- M.S. Roco &
W.S.bainbridge, (eds 2001)

Protecting the next Small Thing- Nanotechnology & the Reverse Doctrine of
equivalents- Andrew Wasson (2004) Duke Law & Tech Rev.10)

Ethics of Nanotechnology @ the frontline- (19 SCC &HT LJ 481,8487 (2003))

www.lexisnexis.com

www.westlaw.com

www.heinonline.com

Khanijou Siddharth, Patent Inequality?: Rethinking The Application of Strict


Liability to Patent Law in the Nanotechnology era. 12 Journal of Technology, Law &
Policy (2006) 179,181;

Zovko Nicholas M, Nanotechnology and the Experimental Use Defense to Patent


Infringement 37 McGeorge Law Review 129,131 (2006).

www.uspto.gov

Sanjay

Pandey

,Patenting

Nanotechnology

in

India

http://www.intelproplaw.com/Articles/cgi/download.cgi?v=1125360993

M.S. Roco & W.S.Bainbridge, Societal Implications of nanoscience and nanotechnology,


(2001)

Andrew Wasson ,Protecting the next Small Thing- Nanotechnology & the Reverse
Doctrine of equivalents (2004) Duke Law & Technology Review 10)

Ethics of Nanotechnology @ the frontline- (19 SCC &HT LJ 481,8487 (2003))

Decision T12/81 BAYER/Diastereomers [1979-85] EPOR Vol B 308 (at 312).

http://www.epo.org/focus/issues/nanotechnology.html, accessed in May 2008.

J.M.Perkel, Nanotech Dreams, [vol.16.no.5, pg 34 to 36 (2002)].

Glenn Harlan Reynolds, Nanotechnology and Regulatory Policy- Three futures 17


Harvard Journal of Law & Technology 179.

Eric Drexler, Nanotechnology Summary, (1990, Encyclopedia Brittanica)

www.zyvex.com/nanotech/feynman.html

Eric Drexler, Unbounding the future, (1990, Encyclopedia Brittanica)

Lemley Mark A, Patenting Nanotechnology, 58 Stanford Law Review 601,605 (2005).

Diamond v. Chakraborty 447 U.S 303(1980).

Worries on IP Editorial, The Electronic Engineering times, UK, March 2002

D.S. Almeling, Note: Patenting Nanotechnology: Problems with the Utility Requirement,
Stanford Technology Law Review 2004, N1, at page 14.