Over the past few years a little word with big potential has

been rapidly insinuing itself into the world’s consciousness. That word is “Nano”.
Nanotechnology is a new approach to industrial production, based on the manipulation of
things so small that they are invisible to the naked eye and even to most microscopes.
While virtually all new technologies are difficult to define, nanotechnology has generated
additional confusion because it defines more of a scale of measurement than a
breakthrough in a particular field of science. Nanotechnology is a term used in describing
technologies pertaining to the visualization and manipulation of materials at the
nanometer scale. Nanotechnology encompasses many different concepts but it is more
generally associated with the “manipulation of matter on an atom by- atom or molecule-
by-molecule basis” to construct or build a certain atomic or molecular configuration1.
Nanotechnology as a scientific field is only a few decades old. In 1959 Richard P.
Feynman—the great American physicist and Nobel laureate—gave what may have been
the premier talk on nanotechnology. Richard Feynman is commonly considered to be the
father of nanotechnology due to his speech in 1959 entitled “There’s plenty of room at
the bottom2”. But the term “nanotechnology” was first used in 1974 by Norio Taniguchi.
The original definition of nanotechnology at that time was:
“Nanotechnology mainly consists of the processing of separation, consolidation, and
deformation of materials by one atom or one molecule.” According to this definition
nanotechnology only describes the manipulation of materials on the molecular level and
it refers to structures that are typically between 1 and 100 nm (1 nm = 10-9 m) in size.
Nanotechnology applications and products make use of characteristics which occur in the
transition area between the atomic and the mesoscopic scale. This means that nanoscale
particles can have different physico-chemical properties with respect to micro scale or
macro scale particles of the same material

1
Frederick Fiedler & Glenn Reynolds (1994), ‘Legal Problems of Nanotechnology: An Overview’, 3 S.
Cal. Interdict. L.J. pp. 593- 595.

2
Feynman, R. (1960), There’s plenty of room at the bottom. Presented in 1959 and first published in the
February 1960 issue of California Institute of Technology’s Engineering and Science, which owns the
copyright. www.its.caltech.edu/~feynman/plenty.htm

1
 Basing on the International Standard Organization (ISO),
nanotechnology may be defined as either or both of the following3:
(1) Understanding and control of matter and processes at the nano scale, typically, but not
exclusively, below 100 nanometers in one or more dimensions where the onset of size
dependent phenomena usually enables novel applications, where one nanometre is one
thousand millionth of a metre,
(2) Utilizing the properties of nanoscale materials that differ from the properties of
individual atoms, molecules, and bulk matter, to create improved materials, devices, and
systems that exploit these new properties.
The official definition of the US National Nanotechnology
Initiative is that nanotechnology involves ‘research and technology development at the
atomic, molecular, or macromolecular levels, in the length scale of approximately 1 to
100 nm range, to provide a fundamental understanding of phenomena and materials at the
nanoscale and to create and use structures, devices, and systems that have novel
properties and functions because of their small and/or intermediate size’.

General Approaches
There are generally two approaches for the production
of nanomaterials. One approach is summarized under the so-called “top-down”
technology and refers to the production of very small structures out of material building
blocks by grinding, etching or other mechanical processing. The million fold produced,
electronic microchips fall under this category4. The desired conductor paths are
predetermined through lithography. The distances and widths of the conductor paths
currently are at less than 100 nm. On the other hand, nanomaterials can also be
manufactured according to so-called “bottom-up” technology. In this case structures are

3
Business Plan ISO/TC229 Nanotechnologies. ISO, (April 2007)
http://www.iso.org/iso/standards_development/technical_committees/list_of_iso_technical_committees/iso
_technical_committee.htm?commid=381983

4
Framing Nano, Mapping Study on Regulation and Governance of Nanotechnologies 22 (January 2009),
available at www.framingnano.eu

2
built atom by atom or molecule by molecule. Often used forms of nanoparticles as an
industrial raw material are oxide nanoparticles, non-oxide nanoparticles, quantum dots or
metallic nanoparticles. Additionally, carbon nanotubes, fullerenes, nano wires and nano
fibres are used5. Other elements with particle at the nano scale are used as catalysts in
industrial processes, because the high specific surface area of nanoparticles usually
increases their catalytic activity. The “bottom-up” technologies are the manufacture of
many raw materials by chemical synthesis, whereas the desired reaction product is
available on the nano scale. The manufacture of carbon nanotubes however is based on
“self assembly”, because the tubes continuously grow from the gas phase through an
ordered assembly of carbon. There is a differentiation between chemical synthesis, “self
assembly” and “positional assembly”. While in the case of “self-assembly” the single
basic units (atoms, molecules) are autonomously positioned according to their natural
properties, the exact position in the case of “positional assembly” is predetermined by
external influences. The latter is very complex and not yet applicable on the industrial
scale. By constantly refining the “top-down”approaches and an extension of “bottom-up”
applications in greater structures the two approaches increasingly converge6.
Areas of Application
Today, nanotechnologies already play a certain (minor) role in
the shelves of supermarkets and, usually, nanomaterials are used to improve existing
products in terms of quality or functionality. Many applications of nanotechnologies such
as, for example, those in medicine, energy generation and storage or in the food sector
are, on the other hand, often still in an early concept phase, and their presence on the
market is still rather far away.
Basing on a commonly accepted view nanotechnologies
development is divided in four stages, with well distinct timelines7:
■ First Generation: Passive (steady function) nanostructures(as from 2000).
The main applications are intermediary system components such as
particles, wires, nanotubes and nanolayers whose properties allow for improvements to
5
Id
6
Id
7
White Paper on Nanotechnology Risk Governance, International Risk Governance council (IRGC),
(2007) http://www.irgc.org/IMG/pdf/IRGC_white_paper_2_PDF_final_version-2.pdf

3
the performance of existing materials and products. One inventory lists over 500
consumer products on the market claiming to incorporate nanostructures, ranging from
clothing and sporting goods to personal care and nutritional products8.
■ Second Generation: Active (evolving function) nanostructures and nanodevices
(as from 2005).
These products can change their state during operation. Typical
applications are expected to be in device and system components such as sensors with a
reacting actuator or drug delivery multi-componentparticles that change their structure as
they reach their intended target9.
■ Third Generation: Integrated nanosystems (systems of nanosystems) (after 2010).
In this generation, it is anticipated that synthesis and assembly techniques
will allow for: forms of multiscale chemical and bio-assembly; networking at the
nanoscale; and, scaled, hierarchical structures. In nanomedicine this could mean the
development of artificial organs and scaffolds for skin tissues. In nanoelectronic, this
could lead to the development of devices based on states other than that of the electric
charge10.
■ Fourth Generation: Heterogeneous molecular nanosystems(after 2015).
The system components and devices are reduced to molecules and
supramolecular structures that have specific structures and play different roles within the
nanosystems. For example, the molecules can be used as devices or engineered to
assemble on multiple length scales. Natural biosystems work in this way, but researchers
currently lack sufficient control at the nanoscale to duplicate them. Potential applications
include nanoscale genetic therapies and supramolecular components for transistors.
Presently, the nano-related products that exist relate to
the first two stages, but those on the market are mainly based on passive nanostructures
(nanomaterials). In the case of active nanostructures (nano-devices), they are still
essentially at research level, though, sometimes, already at a very advanced phase of
development, as in the case of medical products11. Nanoproducts referring to the last two

8
Id
9
Id
10
Id
11
Framing Nano, Mapping Study on Regulation and Governance of Nanotechnologies 22 (January 2009),
available at www.framingnano.eu

4
stages are expected on the market on a medium to long term timeframe and they are yet,
partially undefined. They are linked to the improvement of the ability to manipulate
matter at the nanoscale and to interact with biological systems, and open almost unlimited
scenarios of applications.

Societal and ethical implications of nanotechnology have become a hot topic of public
debates inmany countries because both revolutionary changes and strong public concerns
are expected from its development12 Impacts of nanomaterials on the environment and
human health are uncertain. Nanoparticles can enter the blood stream through the lungs
and possibly through the skin, and seem to enter the brain13. Few studies are available on
the affects nanoparticles will have if inhaled by humans. Other human health concerns
include largely unknown effects of using nanotechnology in pharmaceuticals. These
nanoparticles will also enter the food chain affecting plants and animals. It is also not
known if these particles are biodegradable14.
Recently in March 2006, the German and then the
international press reported that people had become sick after using Magic-Nano
products: aerosols designed to coat glass and ceramic with a protective, dirt-repellent
film. Within days, about 100 consumers became ill with symptoms such as coughing,
headaches, sleep disruption and vomiting. A small number were hospitalized with
pulmonary oedema, but most recovered in a matter of days. The health scare renewed
fears of nanotech products in Germany, the only country where the product was
marketed, and the press had a field day reporting on the first "nano-recall" as authorities
pulled the product from the shelves15. However, after investigation, the German
12
Rosalyn W. Berne and Joachim Schummer (2005), ‘Teaching Societal and Ethical Implications of
Nanotechnology to Engineering Students through Science Fiction’, Bulletin of Science Technology
Society; 25; p. 459.
13
The UK's Health and Safety Executive has published a review of nanoparticle exposure in the UK.
Prepared by the Institute of Occupational Medicine, "Nanoparticles: An occupational hygiene review"
concludes that all four main groups of nanoparticle production processes may result in exposure by
inhalation, dermal or ingestion routes. Available at: UK reviews Nanoparticle exposure October 2004.
http://nanotechweb.org/articles/society/3/10/1/1 Accessed on 19 April 2006.

14
Joel D’SilvaNanotechnologyDevelopment, Risk and Regulation,BILETA, annual conference, 2007
15
Id

5
government and Kleinmann's supplier, Nanopool GmbH, concluded that the problem was
not with the nano-components of the aerosol. So the first 'nano scare' did not actually
involve any nanoparticles. But the incident did raise questions about the risks posed by
these new products, and prompted calls for regulation.16 “Thus it is clear that the current
state of understanding of the risks to human health and the environment from
nanomaterials is one of almost complete ignorance; there are reasons to think that there
could be harmful impacts but the nature and extent of the hazards and risks are essentially
unknown”.17
Advances in nanoscience and nanotechnology are rapidly
furthering the unification of domains— a profound convergence of our understanding of,
and ability to manipulate at the most fundamental levels, the material constituents, and
processes of inert substances and living things. Expressed succinctly, “From the point of
view of nanotechnology, what used to be separate domains of biomedicine, information
technology, chemistry, photonics, electronics, robotics, and materials science come
together in a single engineering paradigm18”. “The convergence of nanotechnology with
information technology linking complex networks of remote sensing devices could lead
to covert surveillance that will be hard to detect. Tiny sensors and listening devices that
cannot be detected by the eye are also seen possible19”. It does not take much imagination
to see how nanotechnology could shrink video cameras and microphones while vastly
expanding the ability to record and store information. In fact, this trend seems
unavoidable in the long run. Possible future convergence of nanotechnologies with
biotechnologies and other cognitive sciences could be used for radical human
enhancements, thus raising ethical questions.

16
Roland Clift, ‘Risk management and regulation in an emerging technology’, in Geoffrey Hunt & Michael
Mehta (2006), Nanotechnology: Risk, Ethics and Law, Earthscan, UK pp. 144-146.
17
Roland Clift, ‘Risk management and regulation in an emerging technology’, in Geoffrey Hunt & Michael
Mehta (2006), Nanotechnology: Risk, Ethics and Law, Earthscan, UK pp. 144-146.

18
Nordmann, A. (2004), Converging technologies—Shaping the future of European societies. Available at
http://www.ntnu.no/2020/pdf/final_report_en.pdf
19
Wei Zhou (2003), ‘Ethics of Nanobiotechnology’, 19 Santa Clara Computer & High Tech. L. J. pp. 481-
483;

6
 Nanotechnology may also have military applications. It can
be used to make smaller and more efficient weapons and bombs by taking chemical and
biological weaponry to another level. Massachusetts Institute of Technology’s (MIT)
Institute for Soldier Nanotechnologies has received US$50 million of research funding
from the U.S. Army; and the U.S. Department of Defense is a key founder of nanoscience
research and development for military purposes. Other countries have already followed
suit20. Many are calling for a review of ethical considerations pertaining to
nanotechnology. However it cannot be denied that many of the social and ethical issues
are the same as those that affect a wide range of other high technologies. That is, while
the technology is new, the issues it raises have been faced before by researchers and
society21. The ethical challenges of nanotechnologies are very similar to the ethical
challenges of biotechnology and biology and this knowledge base may be a good starting
point and foundation for a discussion of ethical reflections on nanotechnology.22

Intellectual property rights are essential in today’s technology

driven age. Building a strategic Intellectual Property portfolio is economically important
from both an offensive and defensive stand point. The promotion of innovation leading to
the creation of new technologies is the very philosophical basis of the Intellectual
Property Right system. The standard justification for the intellectual property system is
that it provides incentive for innovation, allowing the inventor to reap reward by
protecting the work from imitators. Nanotechnology has been described as ‘the
transformational technology of the 21st century. As with the emergence of any pioneering
technology, nanotechnology creates issues and opportunities in perfecting intellectual
property rights

20
Langley, C., with Parkinson, S., & Webber, P. (Eds.). (2005), ‘Soldiers in the laboratory: Military
involvement in science and technology – and some alternatives’.
Available at: www.sgr.org.uk/ArmsControl/Soldiers_in_Lab_Report.pdf
21
Joel Rothstein Wolfson (2003), ‘Social and Ethical Issues in Nanotechnology: Lessons from
Biotechnology and Other High Technologies’, 22 Biotechnology L. Rep. p. 376,

22
Mette Ebbesen, Svend Andersen and Flemming Besenbacher (2006), ‘Ethics in Nanotechnology: Starting
From Scratch?, Bulletin of Science Technology Society; 26; pp. 451- 462.

7
Patents
The field of nanotechnology is currently one of the most active on
an international basis, with respect to number of patent applications. By February 2004,
the number of issued U.S. patents incorporating the term “nano” reached 1,348 patent
titles and 82,740 patent descriptions23. Patents offer protection for functional concepts,
methods, apparatus, or processes that are novel, useful and non obvious24. The Agreement
in Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) in 1994
defines patentable matter as any invention that involves an innovative step and has a
potential industrial application25. The purpose of the patent is to advance innovation
through disclosure and teaching of the details of the invention to the public, and in
exchange, the inventor or owner is rewarded the legal rights of ownership.

Copyrights
Copyrights protect the original expression of an idea.
By offering protection, copyright encourages the expression of original, artistic ideas into
a tangible medium. Legal protection is effected instantly, when the original copyrightable
subject matter is fixed into a tangible medium, e.g. on paper or in a digital storage form.
Copyrights are much more inexpensive and expediently obtained than patents, and are
valid for the author‘s lifetime plus 50 years. A longer period of validity (75/100 years)
applies if the creation was work made for hire, which is generally the case in the
nanotechnology industry.

23
Terry K. Tullis, ‘Current intellectual property issues in nanotechnology’, 2004 UCLA J.L & Tech. Notes
12.
Available at: < http://www.lawtechjournal.com/notes/2004/12_040809_tullis.php> accessed on 20 March
2007.
24
35 U.S. Code, Sect. 101, 102, 103
25
.Results of the Uruguay Round, 6-19, 365-403 (1994); McCabe, K. W. 1998. The January 1999 Review
of Article 27 of the TRIPS Agreement: Diverging Views of Developed and Developing Countries toward
the Patentability of Biotechnology. J. Intell. Prop. L., 6(1), 41-67

8
Trade Secrets
Trade secrets protect any technical or business information that
gives the business a competitive advantage. It need not be completely novel or exclusive,
but it must have a derived or potential economic value from being unknown.
Additionally, reasonable efforts must be made to keep the information secret, e.g. through
diligent and the inexpensive use of Non-Disclosure Agreements (NDA). There is no
formal filing procedure to register trade secrets to obtain protection. Trade secrets consist
of information or knowledge that is not widely known and provides competitive
advantage to its owner26’. Trade secret protection offers the advantage of avoiding the
effort and expense of patent applications and has a potentially indefinite duration; subject,
of course, to reverse engineering. With lengthy commercialization timelines for some
nanotechnologies and the 20-year limit on the patent term, it may be advisable to opt for
trade secret protection as long as the product is not easy to reverse engineer in the near
future. However, trade secret protection requires continuous diligence, and once a trade
secret is revealed, it has no further protective value.

Maskworks
In chip technology when the chip layout
includes an original circuit design, the layout is protectable. Specifically, Maskworks
protect against the unauthorized copying of the chip layout information. Federal
registration is relatively quick and inexpensive, but filing must be done within two years
of commercialization of the chip product.

Trademarks
Trademarks refer to the distinctive signature mark that
can be used to protect the company, product, service, name or symbol. The trademark
must not be descriptive or generic. Legal protection is not offered to the technology,
rather to the company good will and quality associated with the use of the recognized
name or symbol. Trademarks provide exclusive rights within a region or nation and as
long as used commercially, they may be renewed indefinitely. Compared to patents, they

26
Jeffrey Matsuura (2006), Nanotechnology regulation and policy worldwide, Artech House, pp.37-57.

9
are obtained within a moderate time period (usually under 2 years) and typically cost
under $5K per registered mark.

The large influx of investment in nanotechnology research

should accelerate the availability of commercial nanotechnology applications. Therefore,
it is critical to develop intellectual property strategies that allow for fluid transfer of
government-funded science to the private sector for commercialization of
nanotechnology27. As with the emergence of any pioneering technology, nanotechnology
creates issues and opportunities in perfecting intellectual property rights. Today,
nanotechnology intellectual property issues focus primarily on patents, with additional
issues relating to trade secrets. Some of the current issues and challenges encountered in
nanotechnology intellectual property are briefly described below28:

a. Patent Applicability:
It is generally accepted that the properties of matter and other
fundamental scientific discoveries are not patentable. An initial challenge for patent
strategists is to determine how to obtain patent coverage that is based on the discovery of
inherent properties of materials. Simply submitting a smaller version of a known
structure would not be considered patentable without additional utility or novelty. In
order to secure a patent, the invention must be "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof." The
traditional bases for patentability—novelty, non-obviousness and utility—can be secured
by focusing on previously unattainable size, structure, compositions, organization,
methods of measurement and methods of changing the property of materials, as well as
applications of the new properties29. It is generally accepted that the properties of matter
and other fundamental scientific discoveries are not patentable. An initial challenge for
patent strategists is to determine how to obtain patent coverage that is based on the

27
. Vicki Norton, What nanotechnology means for IP, Managing Intellectual Property, June 1, 2003,
28
Terry K. Tullis,Current Intellectual Property Issues in Nanotechnology, 2004 UCLA J.L & Tech. Notes
12, available at
http://www.lawtechjournal.com/notes/2004/12_040809_tullis.php
29
Vicki Norton, What nanotechnology means for IP, Managing Intellectual Property, June 1, 2003,

10
discovery of inherent properties of materials. Simply submitting a smaller version of a
known structure would not be considered patentable without additional utility or novelty.
b. Patenting Abstract ideas–
Nanotechnology is a new field and so most of its patents will be
for basic inventions, not for fully developed final products, creating problems because
patents on basic inventions are inclined to cover larger areas than final products but one is
not allowed to patent purely abstract ideas with the exception of developing them in the
future to more specific inventions. For emerging technologies like nanotechnology, its
patents are early in the research process and perhaps not fully covered by the traditional
understanding and meaning of developed inventions30.
c. Overlapping ideas–
Since nanotechnology is a broad discipline encompassing several others,
the granting of such patents could be problematic. Broad patents granted to inventors can
lock up or impede crucial improvements needed to take a new field from interesting lab
results to commercial viability.
d. Balancing Innovation and Restrictive Intellectual Property-
The increasing rate of patent applications by universities and private
research organizations highlights another potential challenge for the nanotechnology
industry: striking a balance between maintaining freedom of operation for a large number
of innovators, while rewarding innovations with patent rights31. A large number of patent
owners exercising the right to exclude others from practicing various aspects of
nanotechnology can seriously restrict future research and development. Before
commercializing nanotechnology products, companies may have to obtain licenses from
a large number of patent owners. In order to attain the proper balance between innovation
and exclusion, patent strategists will need to consider ethical questions about the division

30
Georgios Zekos, ‘Patenting abstract ideas in nanotechnology’, The Journal of World Intellectual Property
(2006), Vol. 9, no.1, p. 126.

31
Michael A. Heller and Rebecca S. Eisenberg, Can Patents Deter Innovation? The Anticommons in
Biomedical Research, in Perspectives on Property Law, 3rd ed.,159, 160 (Ellickson, Rose & Ackerman Ed.,
1998).

11
and aggregation of legal rights and reassess the scope of licensing practices 32. Granting
exclusive patent rights can be restrictive to future research and could stifle the potential
of more researchers getting involved. It is essential that a proper balance be maintained
between granting exclusive patent rights to inventors on one hand and allowing access to
others to continue research on the other.

e.Procedures for technology transfer

Considering the potential of nanotechnology and its ability to
converge with other technologies, it is essential that the granting of patents does not stifle
the potential of this technology to be transferred between researchers, universities and
even countries. It is essential that this immensely useful technology be transferred to
poorer countries to enable them to utilize and benefit from some of the ground breaking
research and products. With the increasing importance of securing nanotechnology patent
rights in early stages of research, universities and laboratories need to refine mechanisms
to ensure that researchers are aware of the diligence required to establish and transfer
intellectual property rights33. Organizations need to reassess intellectual property
procedures governing invention disclosures, notebook keeping, publication approval,
patent filing approval and confidentiality agreements, as well as implement reasonable
precautions against the theft of trade secrets34. In the interest of avoiding ownership
disputes and litigation over the huge market potential for nanotechnology products,
special attention should be focused on securing intellectual property rights at each
relevant step in the research process.

fGovernment IP Rights in Funded Research-

32
Wei Zhou, SYMPOSIUM REVIEW: Ethics of Nanobiotechnology at the Frontline, 19 Santa Clara
Computer & High Tech. L.J. 481, (May 2003).
33
Terry K. Tullis,Current Intellectual Property Issues in Nanotechnology, 2004 UCLA J.L & Tech. Notes
12, available at
http://www.lawtechjournal.com/notes/2004/12_040809_tullis.php
34
Vicki Norton, What nanotechnology means for IP, Managing Intellectual Property, June 1, 2003,

12
 Funding derived from the Nanotechnology Act will impact the nature
of the patent rights derived from the funded research. Under the Bayh-Dole amendments
to the Patent Act, universities and small business entities retain intellectual property
ownership rights in federal government sponsored research35. The government retains a
royalty-free license to any patented technology funded by the government. Transfer and
acquisition of these rights require compliance with certain formalities, such as when a
licensing deal is made with a corporation or when a company is spun out by a professor.
The university also must consider the potential for premature disclosure in government
reporting requirements associated with the funding of sponsored research36.

gBusiness IP Rights in Funded Research

Global companies including IBM, Hewlett-Packard (“HP”), 3M,

General Electric, Lockheed Martin, Chevron Texaco, Samsung, Mitsubishi and
DaimlerChrysler are making significant investments in nanotechnology research efforts37.
IBM, HP and 3M are allocating approximately one-third of their respective research
budgets to nanotechnology38. Venture capital investment is growing rapidly, with more
than $1 billion in funding over the last three years and as much as $700 million in
investments for 2004. A vast amount of funding from corporate and private sources has
made its way into sponsorships of university research. For example, companies have
made alliances with the California Nanosystems Institute at UCLA and UC Santa Barbara
by investing millions of dollars in sponsorship of nanotechnology research. In exchange
for funding, companies generally share intellectual property rights for specifically
sponsored research projects39.
35
The Bayh-Dole Act, codified at 35 U.S.C. §200-212
36
Terry K. Tullis,Current Intellectual Property Issues in Nanotechnology, 2004 UCLA J.L & Tech. Notes
12, available at
http://www.lawtechjournal.com/notes/2004/12_040809_tullis.php

37
Id
38
John Miller, Note, Beyond Biotechnology: FDA Regulation of Nanomedicine, 4 Colum. Sci. & Tech. L.
Rev. 5 (2002/2003).
39
Telephone Interview with Derrick Boston, Senior Vice President of the California NanoSystems Institute
(Feb. 20, 2004).

13
hU.S. Patent and Trademark Office Challenges

In February 2004, the number of issued U.S. patents

incorporating the term “nano” reached 1,348 patent titles and 82,740 patent
descriptions40. At the same time, the term “nano” has been incorporated into an additional
911 published patent application titles and 28,779 published patent application
descriptions. Considering the fact that the U.S. Patent and Trademark Office (“USPTO”)
receives roughly 300,000 patent applications a year, nanotechnology now impacts almost
10% of applications under consideration41. It is unclear if the USPTO can handle the
anticipated exponential increases in nanotechnology patent applications, especially in
national and regional patent offices where examiners are generally assigned to examine a
single class or related classes of technology42.

While the U.S. Patent Classification System organizes issued

patents, published applications and prior art references based upon their common subject
matter, there is no specific classification for nanotechnology-related inventions43. Today
the USPTO designates ten classes as potentially containing prior art for nanoproducts. A
potential problem with the lack of a unique classification for nanotechnology-specific

40
United States Patent and Trademark Office, at http://www.uspto.gov/patft/index.html
41
United States Patent and Trademark Office: 2003 Patent Performance, at
http://www.uspto.gov/web/offices/com/annual/2003/040201_patentperform.html
In FY 2003, the Patent Organization received 333,452 Utility, Plant, and Reissue patent applications.
Additionally, preliminary data indicates that 243,007 pending applications were published within 18
months after filing and 173,072 patents were granted
42
Terry K. Tullis,Current Intellectual Property Issues in Nanotechnology, 2004 UCLA J.L & Tech. Notes
12, available at
http://www.lawtechjournal.com/notes/2004/12_040809_tullis.php
43
Lance D. Reich, Protecting Tiny Gizmos: The Patent and Trademark Office is preparing for nanotech
applications, The National Law Journal, at
http://www.law.com/jsp/newswire_article.jsp?id=1075219818243 (Jan. 29, 2004). The classification of an
incoming patent application initially determines which technical group and art unit will examine the
application, and also determines the technical area(s) of search to locate potential prior art to the patent
application. Generally, the existence of prior art that either discloses or makes obvious the invention
claimed in the new patent application will block issuance of a patent.

14
prior art is that the examiner may have a difficult time locating the best available prior art
to a nanotechnology patent application. Given the multidisciplinary nature of
nanotechnology developments, specialized examiners may not be familiar with advances
in other areas necessary for the complete examination of a new technology44. The
convergence of several fields with different terminologies for the same phenomena
increases the chance that patents will be issued without proper narrowing of the scope of
claims in view of prior work and publications, or in view of the practical difficulties in
applying the technology45. Although it has undertaken a nanotechnology customer
partnership which attempts to address issues related to patent prosecution for
interdisciplinary inventions in nanotechnology, the USPTO has no plans to create a
nanotechnology classification or to form any new group to evaluate nanotechnology
applications. The lack of cross-functional nanotechnology expertise at the USPTO and
delays in establishing nanotechnology-specific guidelines may lead to the issuance of
overly broad patents by examiners despite relevant prior publications, which is likely to
lead to litigation46.

iForeign Patents

Patent protection is typically only effective within the issuing country. In

light of the considerable worldwide efforts in nanotechnology research, early foreign
patent protection will be essential. Securing international patents will increase the
administrative effort and expense of nanotechnology patent protection47. Many foreign
patent offices follow the USPTO’s lead in dealing with novel subject matter. Although
they may lag behind the USPTO in granting novel nanotechnology patents, certain

44
Terry K. Tullis,Current Intellectual Property Issues in Nanotechnology, 2004 UCLA J.L & Tech. Notes
12, available at
http://www.lawtechjournal.com/notes/2004/12_040809_tullis.php
45
Id
46
Id

47
Terry K. Tullis,Current Intellectual Property Issues in Nanotechnology, 2004 UCLA J.L & Tech. Notes
12, available at
http://www.lawtechjournal.com/notes/2004/12_040809_tullis.php

15
foreign patent offices have taken steps beyond the USPTO in establishing unique
classifications for inventions in nanotechnology48. The World Intellectual Property
Organization’s International Patent Classification system includes a specific
nanotechnology classification (IPC Class B82B) and the Japanese Patent Office has
likewise created an internal patent classification ("Micro-Structural Technology;
Nanotechnology”)49.

jTrade Secret Challenges

Trade secret protection offers the advantage of avoiding the effort and expense of patent
applications and has a potentially indefinite duration, subject, of course, to reverse
engineering50. With lengthy commercialization timelines for some nanotechnologies and
the 20-year limit on the patent term, it may be advisable to opt for trade secret protection
as long as the product is not easy to reverse engineer in the near future 51. However, trade
secret protection requires continuous diligence, and once a trade secret is revealed, it has
no further protective value. Pressure to publish in academic circles makes trade secrets
difficult to maintain52. It also is very difficult to obtain government funding and maintain
trade secrets given the governmental funding reporting requirements. The increase in
funding and companies pursuing nanotechnology applications further will increase
employee mobility and necessitate stringent safeguards against the theft of trade secrets
by departed employees. Finally, as a general matter, investors tend to avoid technologies
that lack patent protection making trade secret protection a non-viable option for many
48
Id
49
Lance D. Reich, Protecting Tiny Gizmos: The Patent and Trademark Office is preparing for nanotech
applications, The National Law Journal, at
http://www.law.com/jsp/newswire_article.jsp?id=1075219818243 (Jan. 29, 2004). The classification of an
incoming patent application initially determines which technical group and art unit will examine the
application, and also determines the technical area(s) of search to locate potential prior art to the patent
application. Generally, the existence of prior art that either discloses or makes obvious the invention
claimed in the new patent application will block issuance of a patent.
50
Terry K. Tullis,Current Intellectual Property Issues in Nanotechnology, 2004 UCLA J.L & Tech. Notes
12, available at
http://www.lawtechjournal.com/notes/2004/12_040809_tullis.php
51
Id
52
Id

16
innovative technology companies. Nanotechnology intellectual property
litigation has already emerged around trade secret issues.

For example, in July 2000, Caliper Technologies Corporation

("Caliper") sued Aclara BioSciences ("Alcara") for misappropriation and conversion of
Caliper's proprietary technical, strategic and intellectual property information relating to
microfluidics. In response, Aclara sued Caliper for patent infringement. After Caliper
obtained a jury verdict against Aclara in its trade secret suit the parties settled. Later in
October 2002, Nanogen announced the settlement of a lawsuit with former employee
Donald Montgomery for taking its trade secrets to Acacia Research Corporation's
("Acacia") CombiMatrix unit and filing patent applications related to the disputed
technology under his name. Under terms of the settlement, Acacia agreed to pay Nanogen
$1 million to cover litigation costs and issue 4 million shares, or 17.5 percent, of its unit's
stock. Acacia also will pay Nanogen royalty payments on sales of products developed by
either CombiMatrix or affiliates that use the disputed technology53. Finally, Zyvex
Corporation, a company developing NanoElectroMechanical Systems (“NEMS”) for
prototype nanoscale assemblers, obtained a permanent injunction against a former
employee for misappropriation of trade secrets.

k. Intellectual Property Litigation-

Nanotechnology intellectual property litigation has already emerged

around trade secret issues. Given the breadth of the field and opportunity for broad patent
coverage, intellectual property litigation over patents is likely to emerge in the near
future54. Considering the expense of litigation, innovators lacking the resources to litigate

53
Nanogen Reports Favorable Ruling in Its Litigation Against CombiMatrix Corp. and Dr. Donald
Montgomery, PR Newswire Association, Inc. (Aug. 7, 2003). Nanogen's complaint sought a correction of
inventorship on U.S. Patents No. 6,093,302, 6,280,595 and related patents or applications, assignment of
rights in those patents or applications to Nanogen, and an injunction preventing disclosure of trade secrets
and damages for trade secret misappropriation.
54
Terry K. Tullis,Current Intellectual Property Issues in Nanotechnology, 2004 UCLA J.L & Tech. Notes
12, available at
http://www.lawtechjournal.com/notes/2004/12_040809_tullis.php

17
patent validity may be forced to license these patents rather than contest them. Given the
novelty of the technologies involved, the patentability of some nanotechnology
inventions may ultimately be addressed by the courts rather than by the USPTO 55. To
date, litigation over nanotechnology scale patent infringement has been primarily focused
on biotechnology products such as nanogold particle labels used in diagnostics,
microfluidic devices and microarrays. Nanotechnology patents may be problematical to
enforce because it is hard to discover infringement. Given the novelty of the technologies
involved, the patentability of some nanotechnology inventions may ultimately be
addressed by the courts rather than by the USPTO56. To date, litigation over
nanotechnology scale patent infringement has been primarily focused on biotechnology
products such as nanogold particle labels used in diagnostics, microfluidic devices and
microarrays. Hence, in the long term, nanotechnology is likely to increase the relative
importance of intellectual property for society. Nanotechnology is an emerging
technology with exciting prospects for intellectual property, in both the near term and for
many years to come57.

55
See Lance D. Reich, Protecting Tiny Gizmos: The Patent and Trademark Office is preparing for
nanotech applications, The National Law Journal, at
http://www.law.com/jsp/newswire_article.jsp?id=1075219818243 (Jan. 29, 2004).
The classification of an incoming patent application initially determines which technical group and art unit
will examine the application, and also determines the technical area(s) of search to locate potential prior art
to the patent application. Generally, the existence of prior art that either discloses or makes obvious the
invention claimed in the new patent application will block issuance of a patent.
56
See Lance D. Reich, Protecting Tiny Gizmos: The Patent and Trademark Office is preparing for nanotech
applications, The National Law Journal, at
http://www.law.com/jsp/newswire_article.jsp?id=1075219818243 (Jan. 29, 2004).
The classification of an incoming patent application initially determines which technical group and art unit
will examine the application, and also determines the technical area(s) of search to locate potential prior art
to the patent application. Generally, the existence of prior art that either discloses or makes obvious the
invention claimed in the new patent application will block issuance of a patent.
57
Terry K. Tullis,Current Intellectual Property Issues in Nanotechnology, 2004 UCLA J.L & Tech. Notes
12, available at
http://www.lawtechjournal.com/notes/2004/12_040809_tullis.php

18
 It is widely expected that the next wave do global advances
in information, communication technologies and health care will be driven by
nanotechnology. With calls for sustainable development nanotechnology (NT) is being
depicted as the answer to development without wastage and without harming the
environment. “Its exploitation and utilization is predicted to transform developing
countries and help reduce poverty. Billions of people around the world still suffer from
inadequate access to clean water, energy, information, shelter, health care, and other basic
needs58”. One of nanotechnology’s most compelling promises is that of access to safe
drinking water. Point-of-use water filtration could purify water for those who do not have
clean and reliable water supplies. Nano filters can be used to remove bacteria, viruses and
other contaminants. Natural arsenic in wells which is a problem in many countries can be
solved using nanotechnology. Major sections of society in poor and developing countries
do not have access to electricity. Having access to electricity has direct implications on
pumping of water, saving firewood, powering of various appliances, lighting schools etc.
Using nanotechnology cheap photovoltaic films can be produced. Integrated into roofing
panels these could yield a safe and sustainable source of inexpensive energy59.
Nanotechnology can also be used to increase the efficiency of
energy storage devices. “Packaging of integrated systems applying advanced
nanotechnology for diagnostic testing, custom formulation of medication, and targeted
delivery of treatments, could help deliver medical care where doctors and hospitals are
scarce. Nanoporous membranes may help with disease treatment in developing countries.
They are a new way of slowly releasing a drug, important for people far away from a
hospital60”. Continuing drastic reductions in the cost of information technologies, enabled
by nanotechnology, would facilitate universal access to computing and communications.

58
Fiona Moore (2004), ‘Implications of Nanotechnology’, Health law Review, Vol. 10 (3), p. 10.
See also, Barrett Hazeltine & Christopher Bull (1999), Appropriate Technology, Academic Press - London,
p. 263- 265.

59
Joel D’SilvaNanotechnologyDevelopment, Risk and Regulation,BILETA, annual conference, 2007

60
, Glenn Hanlan Reynolds (2003), ‘Nanotechnology and Regulatory Policy: Three Futures’ Harvard
Journal of Law and Technology, Vol. 17(1), pp. 188 – 205.

19
Thus nanotechnology may help make computers, cell phones and other related tools
accessible to the poor. “Materials formulated with molecular precision could provide
better shelter and tools. In agriculture and food processing, nanotechnology is predicted
to make significant advances61.” Its uses in food production could range from designing
new and better food products to foods that do not rot. This could have implications on
poor countries facing famines or droughts. Molecular manufacturing could enable clean
production and new methods for environmental remediation, enabling global abundance
to be both feasible and sustainable. Actual applications of nanotechnology will depend on
a range of factors, including the evolution of related technologies such as biotechnology
and information technology, economic systems, and institutions regulating intellectual
property62.
However like all technologies there is another side. Many scholars
and thinkers have predicted that even with continuing progress in poverty reduction,
many people will probably still be poor when molecular manufacturing technologies
become available – as nanotechnology could still be expensive for much of the
developing world63. The effect and challenge of bridging the nanotechnology divide also
needs to be considered. This divide may work contrary to claim that nanotechnology will
help developing countries. Only a few developing countries are presently involved in
nanotechnology research like India, China and South Africa. Most poor and developing
countries lack the ability to research and exploit these new technologies. They lack
qualified personnel as well as infrastructure64.
Over the past two decades the role of intellectual property in all areas
of science and technology has exploded globally – primarily due to rules prescribed by
the World Trade Organization’s Trade-Related Aspects of Intellectual Property (TRIPs)
and by bilateral/regional trade agreements65. The TRIPs agreement obligates all WTO
61
Charles Vordran (2004), ‘The Many faces of Nanotechnology’, 16 No. 7 J. Proprietary Rts. pp. 6- 8.

62
The Royal Society and the Royal Academy of Engineering. (2004), ‘Nanoscience and Nanotechnologies:
Opportunities and Uncertainties’, pp.20- 22. Available at: www.nanotec.org.uk/finalreport.htm
63
Joel D’SilvaNanotechnologyDevelopment, Risk and Regulation,BILETA, annual conference, 2007
64
Id
65
ETC Group Report, Nanotech’s “Second Nature” Patents: Implications for the Global South,March/April
and May/June-2005,ETC Group Special Report – Communiqués No. 87 and 88, available on

20
member countries to adopt and enforce minimum standards of intellectual property. WTO
has 150 members, and claims that it accounts for over 97% of all world trade 66. In 1996
the WIPO and WTO established a collaborative relationship in order to implement the
TRIPs Agreement. Among other IP rules, WTO members must allow patenting in all
fields of technology. The initial grace periods and flexibility allowed by TRIPs for
developing country members have nearly expired. By 2006, the so-called “least
developed countries” are required to adopt the WTO/TRIPs standards67. Over the past
decade, civil society, social movements, the UN Human Rights Commission and some
governments have warned of the inequities of IP for the global South68.
Recently, even at WIPO – the UN body whose mission is to promote
and protect intellectual property – the uneven IP playing field and the negative impacts of
TRIPs have become undeniable and untenable for many developing nations. In
September 2004 the “Geneva Declaration on the Future of the World Intellectual Property
Organization” warned that current IP regimes are having negative impacts in the
developing world, resulting in lack of access to essential medicines, anticompetitive
practices that hinder innovation and the misappropriation of social and public goods69. At
WIPO’s General Assembly meeting, Brazil and Argentina, supported by 14 developing
country co-sponsors, proposed that WIPO adopt a “development agenda,” stating that
Intellectual property protection cannot be seen as an end in itself, nor can the
harmonization of intellectual property laws leading to higher protection standards in all
countries, irrespective of their levels of development. The role of intellectual property
and its impact on development must be carefully assessed on a case-by-case basis. IP
protection is a policy instrument the operation of which may, in actual practice, produce
benefits as well as costs, which may vary in accordance with a country’s level of
development. Action is therefore needed to ensure, in all countries, that the costs do not

www.etcgroup.org
66
From “The WTO in brief,” available on the Internet at
http://www.wto.org/english/thewto_e/whatis_e/inbrief_e/inbr00_e.htm
67
ETC Group Report, Nanotech’s “Second Nature” Patents: Implications for the Global South,March/April
and May/June-2005,ETC Group Special Report – Communiqués No. 87 and 88, available on
www.etcgroup.org
68
Id
69
The Declaration, translated into six languages, can be found on the Consumer Project on Technology
website at
http://www.cptech.org/ip/wipo/genevadeclaration.html.

21
outweigh the benefits of IP protection. WIPO’s General Assembly adopted the decision to
welcome a development agenda. But the US, UK and other industrialized nations are
balking at the decision to give development concerns a higher profile within WIPO,
acknowledging only that WIPO should give greater technical assistance to developing
countries70. Reports will be prepared and the issue will be considered at WIPO’s General
Assembly meeting in September 200571. Meanwhile, developing nations are now facing a
new technology wave – and the requirement to accommodate nanotechnology-related
inventions – even while still grappling with unresolved controversies over biotechnology
and information technologies. By next year, ready or not, most of the world’s developing
nations will be obligated to evaluate and enforce nanotech patents72.
ETC Group is suggesting that nanotech, unencumbered by
patents, will provide solutions for the South’s most pressing needs. On the contrary, ETC
Group believes that a technological fix can never right social wrongs. However, much ink
has been spilled of late on the benefits nanotech will bring to developing nations while
ignoring the realities of technology transfer and intellectual property73. Multinational
corporations, universities and nanotech start-ups (primarily in the OECD countries) have
already secured numerous patents on essential nanotech tools, materials and processes. To
the extent that these are “foundational” patents – that is, seminal breakthrough inventions
upon which later innovations are built, researchers in the developing world could be shut-
out. Nanotech patent thickets are already causing concern in the US and Europe74.
Researchers in the global South are likely to find that participation in the proprietary
“nanotech revolution” is highly restricted by patent tollbooths, obliging them to pay
royalties and licensing fees to gain access75.

70
William New, “Nations Clash On Future Of WIPO Development Agenda,” Intellectual Property Watch,
April 11, 2005. Available on the Internet: http://www.ip-watch.org
71
WIPO’s decision is available on the Internet: http://www.cptech.org/ip/wipo/wipo10042004.html
72
Hope shand and Kathy jo wetter , trends in IP and nanotechnology: Implications for the global south,
journal of intellectual property rights, vol12, jan 2007, pp 111-117
73
Salamanca-Buentello F. et al., “Nanotechnology in the developing world,” PloS Med 2 (5): e97, May
2005.
74
ETC Group Report, Nanotech’s “Second Nature” Patents: Implications for the Global South,March/April
and May/June-2005,ETC Group Special Report – Communiqués No. 87 and 88, available on
www.etcgroup.org
75
Id

22
 Most of the nanotech products are being patented in developed
countries. This will prevent other developing countries from exploiting these technologies
and create the same patent conflicts witnessed with the digital and biotech revolutions.
Corporate interests will almost certainly control the lions share and will dominate
ownership and access, putting poor countries at a severe disadvantage76. In terms of
public awareness and regulation, developing countries have shown themselves to be
inadequately equipped to cope with these advanced technologies. Many developing
countries tend to lack appropriate environmental, health and other safety regulations.
They also lack monitoring and enforcement capabilities. ETC Group is not suggesting
that nanotech, unencumbered by patents, will provide solutions for the South’s most
pressing needs. On the contrary, ETC Group believes that a technological fix can never
right social wrongs. However, much ink has been spilled of late on the benefits nanotech
will bring to developing nations while ignoring the realities of technology transfer and
intellectual property77.

ETC Group offers the following recommendations related to nanotech IP.

1. Poor applause In the G8 meets to discuss its dubious “Pro-Poor Science” strategy,
leaders of rich nations shouldn’t ignore the restrictions implicit in intellectual property
that make it difficult or impossible for the South to develop its own independent
technology solutions and to have access to the useful technologies of others. A truly “Pro-
South” science policy would establish a global ten-year sunset clause on all monopoly
patents79.
2. Patent pause: WIPO should initiate a global suspension of patent approvals related to
any applications that meet the USPTO’s Class 977 standard (the criteria for

76
Barry Newberger (2003), ‘Intellectual Property and Nanotechnology’, 11 Tex. Intell. Prop. L.J. pp.
649 – 652
77
Salamanca-Buentello F. et al., “Nanotechnology in the developing world,” PloS Med 2 (5): e97, May
2005
78
ETC Group Report, Nanotech’s “Second Nature” Patents: Implications for the Global South,March/April
and May/June-2005,ETC Group Special Report – Communiqués No. 87 and 88, available on
www.etcgroup.org
79
Id

23
nanotechnology patents) until further social review, including wide public debate, is
undertaken on the impacts of nanotech IP80.
3. Technology flawsIn close cooperation with social movements, including trade unions,
the Food and Agriculture Organization (FAO) and the United Nations Conference on
Trade and Development UNCTAD) should cooperate with WIPO in producing a study on
the impact of nanotech-related intellectual property on monopoly practices, technology
transfer and trade. The UNCTAD Commission on Science and Technology for
Development, also in conjunction with social movements, should examine the
implications for technology transfer and the needs and interests of developing countries81.
4. TRIPs clause: South governments and countries-in-transition should suspend any
Class 977 equivalent patent grants or applications pending a full evaluation of their
impacts. In particular, governments should determine whether or not such patents
compromise access to the basic elements of nature or contravene national legislation or
international agreements, such as WTO TRIPs, concerning intellectual property over
living material82.
5. Ordre public laws: National governments and relevant international organizations such
as WIPO and UNCTAD should examine the social and ordre public significance of Class
977 equivalent patents that could compromise access to the fundamental components of
nature83.
6. Diversity lawsWith input from indigenous peoples and peasant farmers’ organizations,
the Convention on Biological Diversity (CBD), the Commission on Sustainable
Development (CSD) and FAO should consider the impact of intellectual property on
fundamental elements of nature with respect to biodiversity and national sovereignty over
genetic resources (especially in such fields as synthetic biology or Nanobiotechnology).
In a wider context, either the CBD or the CSD should adopt a permanent agenda item to
monitor developments in nano-scale technologies84.

80
Id
81
Id
82
Id
83
Id
84
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24
 A recent RAND report titled ‘ The Global Technology
Revolution 202085’ highlights the fact that in 2020, areas of particular importance for
technology trends will include biotechnology, nanotechnology, materials technology, and
information technology. Despite the projections and benefits of NT’s to developing
countries and the poor, caution is required. This new field about which a lot more is yet to
be known may just become the poor man’s nightmare

85
RAND technical report (2006), ‘The Global Technology Revolution 2020’. Available at
http://www.rand.org/pubs/technical_reports/TR303/

25