Universities and companies are rushing to the patent office in record numbers to patent nanotechnology inventions. There are multiple questions arising. How do we legally classify these new technologies? Who controls – and benefits from – fundamental innovations that are the foundation for future innovation? The nanotech applications are expanding the limits of science and medicine; they are stretching the boundaries of intellectual property law. As with other waves of innovation, nanotechnology will catalyze change in social, scientific, and legal arenas. Shifts in the way intellectual property (IP) is defined and administered are already becoming visible as a result of nanotechnology trends.
As the Biomedical nanotechnologies are unique because they cover innovations emerging from a previously inaccessible environment – the nanoscale. The watershed development which made the nanoscale accessible and catalyzed the nanotechnology field was the 1981 invention of the scanning tunneling microscope (STM), which earned its inventors the Nobel Prize for Physics in 1986 and the praise of the Nobel committee, which noted the invention opened up "entirely new fields...for the study of the structure of matter." The STM was the first of a new generation of tools empowering scientists and
Engineers to pursue possibilities at the nanoscale.
Now due media hype about nanotechnology, not only the scientific community but the public at large has heard about the huge impact that nanoparticles and their capabilities may have on our lives in the ongoing 21st century. How will the government resolve these issues and review patents that do not easily fit into the existing system? Any one of these issues would challenge a field of scientific endeavor; combined, they present the nanotechnology field with a complex legal landscape that will require skill and collaboration to navigate.
Along with a new generation of tools came a new generation of IP problems. As the Nanotechnology provides biomedical scientists, access to the nanoscale environment and its unique surface properties and other distinctive characteristics which opens the door to a world of transformative treatment possibilities. Because Nanotechnology applications did not conform to the existing classifications of IP. From an IP perspective, some aspects of biomedical nanotechnology fall easily into one of the four categories. Diagnostic equipment, for example, classifies as machinery and there are few complications with applying IP laws to this category because, in this instance, size does not matter. Materials built on a nanoscale are not treated any differently from their larger counterparts. But most of nanotechnology is not nearly as easy to classify, since many of the emerging technologies often draw upon innovations across multiple disciplines. The key difference with nanotech is the multidisciplinary nature of it. The closest example is biotech, which is a much focused technology.
Nanotechnology is the first technology wave highlighting a shift in IP patterns that favors universities. In the past, private companies drove the trends in IP protection, simply because they dominated the patent landscape. Universities, by contrast, have differing aims from the private sector, where protection of the individual company's interests comes first and patents may be closely held. As a result, certain lessons on how IP leads to commercialization learned from past waves, such as biotechnology, may not be applicable in this new IP landscape. University patents often emerge from basic science and, without proper oversight, can become overly broad "building block" patents, which protect fundamental concepts
upon which all subsequent advances are based. One of the unique characteristics of nanotechnology IP, as differentiated from biotech and other previous waves of innovation, is that a number of "building block" patents have issued from the outset, thereby creating a different dynamic in the IP landscape. "Indeed, many of the most basic ideas in nanotechnology are already patented or may well end up being patented. These building block patents can be very lucrative because the fundamental technologies they claim may become prerequisites for many downstream innovations, and thus can generate substantial licensing revenues for the university that holds them.
The complexity of nanotechnology patents means that there are potentially more players in the field than might appear at first glance. A basic nanotechnology patent may have implications for semiconductor
design, biotechnology, materials science, telecommunications, and textiles, even though the patent is held by a firm that works in one of these industries. Unlike other new industries, in which the patentees are largely actual or at least potential participants in the market, a significant number of nanotechnology patentees will own rights not just in the industry in which they participate, but in other industries as well.
At the same time, nanotechnology patents tend to be concentrated in a relatively small number of hands. Although there are some holders who hold nanotechnology patents, out of that IBM and MIT, hold one-half of all nanotechnology patents thus far issued. Given the potential financial rewards of bringing new technology to market, other industries, including biotech, have seen high-profile legal battles over patents. Yet the question of how the technology from these fundamental upstream patents is made available to the broader research and development community will be critical to their rapid application. Ultimately, universities are likely to be motivated by the benefits of licensing, creating a relatively free flow of building block patents to broader downstream users. Certainly, large patent-holding pharmaceutical companies are increasingly interested in obtaining licenses for nanotechnology IP.
A quick look at some recent developments in the field highlights just how complex the science behind nanotechnology is – a complexity that may lead to new IP territory. But this is more than just an intellectual legal exercise. Failing to find a good path around and through these complexities could stifle the development of nanotechnology- based therapeutics and diagnostics and limit the ultimate benefit for patients.
Associate Professor of Law,
KIIT University, Bhubaneswar, India,
Blog: http://tabrezahmad.technolexindia.com http://iplexindia.blogspot.com
Research Papers: http://papers.ssrn.com/sol3/cf_dev/AbsByAuth.cfm?per_id=1189281