THE DIFFERENCE IN NANOPARTICLES SIZE, THE PATENTABILITY OF NANOTECHNOLOGY INVENTIONS: THE CASE WITH NOVELTY AND INVENTIVE STEP REQUIREMENTS

Abstract

In line with the remarkably rapid increase of the number of patent applications on nanotech inventions, legal disputes have arisen as to the challenges facing the patentability of such inventions. Chief among them are the issues of the novelty and inventive step of nanotech inventions. With respect to the novelty, the question is whether the minimized forms of substances can be regarded as novel over the substances at larger scales? Also, the question concerning inventive step is in what situations nanotech inventions are considered as involving inventive step? This article seeks to identify the difficulties of nanotech inventions in meeting the novelty and inventive step requirements and examine the solutions suggested by the European Patent Office (EPO) and its case law during the examination of nanotech patent applications. The findings of this case show that merely making a known materials or devices smaller does not grant novelty to the invention. Instead, the size of the nanoparticles (or the sub-range selection) in patent applications related to the nanotech inventions needs to be narrow, sufficiently far removed from the prior art, and/or purposeful with new technical teaching. Also, the mere minimization or reduction of the particle size does not account for the inventive step of an invention. It must be shown that the invention has a new technical advantage not found in the prior art, and not obvious to a skilled person which comes from the size differences. It is only in this situation that the inventive step of downscaling of particles may be acknowledged.