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Non-obviousness in the Science of Making Things Smaller

Nanotechnology, broadly defined as the study of matter at the atomic or molecular scale (1-100 nm), raises many potential issues for inventors seeking patent protection. This paper will explore the circumstances under which making something smaller is non-obvious, the multi-disciplinary challenges faced by the USPTO in examining these patent applications, and the policy implications of granting exclusive rights in a rapidly emerging field.

I. Obviousness in miniaturization – 35 U.S.C. §103

The miniaturization of an invention, standing alone, is unlikely patentable. In In re Rose, the US Court of Customs and Patent Appeal held that “differences in degree and/or size [are] not patentable distinctions” [1], suggesting that the mere scaling down of a claimed object is not sufficient to distinguish patentability over prior art. Recently, in In re Rinehart, the US Court of Appeals held that when the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device but the claims did not “exhibit qualitatively different phenomena” from the prior art, the claimed invention was not distinct from prior art [2]. However, as matter is reduced to the nano-scale, physical properties of materials often change drastically, giving rise to unexpected or previously unknown properties. For example, quantum dots – semiconductor nanostructures that have properties different from conventional-sized semiconductors – have remarkable properties based on quantum effects. Quantum dots, when excited with a beam of light, fluoresce with a narrow and symmetric emission spectrum that directly correlates with its crystal size, and can be fine-tuned to emit light at various wavelengths by altering the size of the core [3]. Thus, this invention is not merely a smaller version of the standard semiconductor. The new and improved properties that result when prior art is miniaturized may likely satisfy the “qualitatively different phenomena” necessary for finding non-obviousness.

While Gordon Moore, Intel co-founder, predicted that engineers would double the number of transistors on a chip every 18 months (Moore’s law), one might argue that nanotube transistors are obvious in the computing industry. 35 U.S.C. §103 restricts patents against inventions that “would have been obvious at the time the invention was made to a PHOSITA to which said subject matter pertains” [4]. Using the “teaching, suggestion, or motivation to combine” test, first mentioned by the Court of Appeals in In re Dembiczak, the non-obviousness analysis is squarely focused on the intellectual context at the time of the invention’s creation, and the miniaturization of existing macro-scale patented inventions will likely be deemed obvious if prior art describes with reasonable expectation of success a way to make the nano-scale version [5]. The creation of nano-scale structures often requires novel methods to overcome difficulties in manipulating miniscule molecules with bigger and bulkier instruments, as well as methods that deal with the tendency of molecules adhering to the manipulating apparatus. Furthermore, nano-scale structures can also be built by self-assembly, which involves the design of molecules that aggregate into the desired structure. Therefore, if nothing has been put forth publicly to teach, suggest or provide a motive for overcoming some of these fundamental hurdles, the requirement for non-obviousness is likely met with a proposal of an enablement method for the nano-scale invention.

The use of the TSM test is at the heart of the recently argued Supreme Court case, KSR International Co. v. Teleflex Inc., in which the petitioner is urging the Court to abandon the TSM test [6]. If the Supreme Court were to follow this recommendation, the inquiry would likely be focused on whether the claimed invention manifests the extraordinary level of innovation beyond the capabilities of a PHOSITA to warrant the award of a patent [7]. Abandoning the TSM test will take away some certainty and definiteness in determining obviousness for nanotechnology inventors. Some scholars have proposed the “reverse doctrine of equivalents” as an alternative legal doctrine to assessing the non-obviousness requirement [8]. Applying the two-prong test articulated in Texas Instruments, (1) the nano-scale device must have literally infringed the original inventor’s patent claims whereby the language of the claim “reads directly, unequivocally, and word-for-word” on the accused device, and (2) the nano-scale device must be “sufficiently different” from the macro-scale device [9]. Under the first prong, a broad patent without reference to scale might likely lead to infringement by the nano-scale invention if it performs the same function as the macro-scale counterpart. However, under the second prong, the inventor of the nano-scale device would emphasize the unique chemical and physical properties at the nano-scale. In the quantum dots example, the unique properties would be the quantum mechanical effects that were not seen in the macro-scale semiconductors. Thus, the reverse doctrine of equivalents might provide a possible legal framework to give inventors in the nanotechnology industry incentive to develop, while preventing literal infringement of already existing patents.

II. Challenges in the USPTO

The knowledge of the examiners and the expertise of the technology group at the USPTO is crucial to the grant of nanotechnology patents since the determination of non-obviousness requires intimate knowledge of the particular technology to get a sense of what a PHOSITA would know in light of all prior art. Historically, expertise in only one field of science was sufficient to effectively research and grant competent patents [10]. However, expertise in one field might not be sufficient to thoroughly understand nanotechnology patent applications, which will often involve some combination of biology, chemistry, physics, material science, electronics, telecommunications and engineering.

The UPSTO has previously evolved to meet the peculiarities of different fields. In 1988, the USPTO established a biotechnology examining group to address the unique issues that arise in less predictable biological systems [11]. While the USPTO might entertain the idea of establishing a specialized nanotechnology group or subgroups within existing groups to address nanotechnology, such a change will be unlikely in the near future since nanotechnology is still at its early stages of scientific development and the predictability of nanotechnology systems is not yet established. Until then, the shortage of qualified examiners, the ever growing number of nanotechnology patent applications and the ongoing backlog in the patent prosecution process are likely to add to the delay that may potentially stifle the growth of the nanotechnology industry in the US.

III. Policy considerations for granting exclusive rights

Refusing nanotechnology patents because of the mere existence of a macro-scale version would create unfair gains for prior art patent holders by giving them rights over subsequently developed nano-scale inventions. Such a result does not further the patent system’s underlying goal to “promote the progress of science” [12], and the public is less likely to benefit from the discovery of a nano-scale application. Various policy reasons justify the grant of property rights to nano-scale inventors. In situations where the claims of the original patent may block the nano-scale improvements, the nano-scale inventor will be forced to license the invention from the macro-scale patentee. High transactions costs from such negotiations may potentially reduce the incentive for the scientific community to research and develop this new area of science. However, even if the nano-scale inventor decides to enter into a licensing agreement, negotiations may breakdown if the parties hold diverging valuations of their invention. Finally, the nano-scale inventor is likely to be better equipped with the relevant technical expertise to commercialize the new technology, thereby absorbing some of the nontrivial costs that the prior art patent holder would face [13]. However, in granting these exclusive rights to nanotechnology inventors, the USPTO should also recognize that the multi-disciplinary nature also implies that a significant number of these patentees will own rights not just in the industry in which they participate, but in other industries as well. Thus, these building-block patents have the potential of creating a greater deadweight loss than improvement patents [14].

IV. Conclusion

While nanotechnology inventors face the surmountable obstacle of demonstrating non-obviousness, UPSTO and judges face the challenge of understanding these multi-disciplinary inventions to avoid granting and upholding overly broad patents. In a rapidly emerging field, a balance has to be struck between the benefits of exclusive rights that support research and development investments, and costs of exclusive rights that may impede improvements necessary to take nanotechnology from interesting lab results to commercial viability.


References:

[1] 220 F.2d at 463
[2] 531 F.2d at 1053
[3] See generally http://www.sciencenews.org/articles/20060603/bob8.asp
[4] 383 U.S. at 14
[5] 179 F.3d at 999
[6] Brief in Opposition, 2005 WL 1492885
[7] Brief of the United States, 2006 WL 2453601
[8] 2004 Duke L. & Tech. Rev. 10 (2004)
[9] 846 F.2d at 1371
[10] 2004 UCLA J.L. & Tech Notes 12 (2004)
[11] http://www.wws.princeton.edu/ota/disk1/1989/8924/8924.PDF
[12] U.S. Const. Art I, § 8, cl. 8
[13] 12 B.U. J. Sci. & Tech. L. 127
[14] 58 Stan. L. Rev. 601

Posted by at March 25, 2007 9:43 AM in Commentary Posts