Nanotechnology

Important features are

1. Nanotechnology involves research and technology development at the 1nm-to-100nm range.

2. Nanotechnology creates and uses structures that have novel properties because of their small size.

3. Nanotechnology builds on the ability to control or manipulate at the atomic scale.

Effect Of Surface

Ratio of bulk molecules to surface molecules

L nb ns ratio = nb /ns

1 m 8.5 x 1028 1.2 x 1020 7.3 x 108 1 mm 8.5 x 1019 1.2 x 1014 7.3 x 105 1 µm 8.5 x 1010 1.2 x 108 7.3 x 102 100 nm 8.5 x 107 1.2 x 106 721 nm* 99 56 0.77

* Calculated using unit cells

Body- centered cubic crystal structure

Electron in a box of length L

Energy in Na bulk material

(c)

CONTINUOUSCONTINUOUS

Usually bulk properties dominate

At nanoscale

Surface effects dominate.

Quantum effects come into play.

Van der Waals forces become

important.

Gravitational effects can be ignored.

Source:  European Commission. Community Research. 2004. Nanotechnology. Innovation for tomorrow’s world.

Source: Quantum Computing: “A short Course from Theory to Experiment, Joachim Stolze and Dieter Suter.

Source: Quantum Computing. 2004. A Short Course from Theory to Experiment. Joachim Stoltze and Dieter Stuter.

Lattice of covalently bonded carbon atoms

Single-walled Carbon Nanotube d d = 0.4nm -

10nm

L

L = ?

Independent Claims 

1. A transistor that uses a carbon nanotube ring as a semiconductor material, the carbon nanotube ring having semiconductor characteristics.

12. A transistor that uses a carbon nanotube ring as an electrode material, the carbon nanotube ring having conductivity or semiconductor characteristics.

18. A carbon nanotube ring having p-type semiconductor characteristics.

19. A semiconductor device in which a carbon nanotube ring having p-type semiconductor characteristics is placed on an n-type semiconductor substrate thereof.

  Disclosure

Detailed disclosure of

‣ method to produce carbon nanotubes

‣ method to produce carbon nanotube rings from

nanotubes

‣ method of fabricating transistor using nanotube

ring

Basis for fall-back positions on ring diameter.

Alternatives for transistors Carbon nanotube transistors Single electron transistors (SET)

Memory devices MRAM (various different approaches Phase change RAM

PhotonicsNano-electromechanical system (NEMS)Fuel cellsThermo-photovoltaicsQuantum computersSoftware

Nanotechnology in Electronics

Investments

Large investments

Attracted more public funding than any other

single technology

2003 5 to 6 Billion USD

Source: Communication from the Commission. 2004. “Towards European Strategy for Nanotechnology”.

IP Protection

Patent System

‣ Nanotech vs .com wave

Trade Secrets

‣ Processes

Considerations for Patent Practitioner

On practitioner level‣ Technology emerging, technically complex and cross- disciplinary‣ Practitioners not experienced‣ Nomenclature still developing‣ Lack of experience in working in multi-disciplinary teams‣ Case law relating to other arts.

At the Patent Offices‣ Emerging technology, examiners not experienced yet‣ Prior art collections still developing‣ At least in the US, no nanotechnology examining group yet - possible delays

- overly broad claims, at least initially.

Invention vs discovery

Distinction: discovery and invention, may become blurred

Discovery:

‣ Carbon nanotube discovered in 1991 by Sumio Iijima

Inventions:

‣ New methods to produce carbon nanotubes consistently and economically would be

patentable

‣ Applications of carbon nanotubes would be patentable

e.g. US 6,590,231B2 relating to “Transistor that uses carbon nanotube ring”

UTILITY

Definition and tests — matters of national law.

In ZA, the term means “effective to produce the result aimed at or promised”. In the US, 35 USC 101, an applicant must:

‣ claim invention that is statutory subject matter; and

‣ show that the claimed invention is “useful” for some purpose, either explicitly or implicitly (M.P.E.P. Section 2107). Nanotechnology in its infancy — pioneering inventions Ensure at least one specific and credible utility is disclosed.

NOVELTY

Invention not anticipated by prior art.

Tests for anticipation and what constitutes prior art — national laws.

In the US, “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described in a single prior art reference”. (Verdegaal Bros., Inc. v Union Oil Co., 814 F.2d 628, 631, 2 USPQ 2d (BNA) 1051, 1053 (Fed Cir. 1987)). Differences in size/dimensions may be important.

Inherency may be a problem.

Inherency can only be applied if the alleged feature would necessarily and inherently follow.

INVENTIVENESS / NON-OBVIOUSNESS

Claiming something smaller — may invite an obviousness rejection. “Mere scaling……..… would not establish patentability…………”. (In re Rinehart, 531 F.2d 1048, 1053, 198 USPQ 143 (CCPA 1976)).

However, may be patentable

‣ if small structure performs or functions differently;(In re Gardner v TEC Systems Inc., 725 F.2d 1338, 220

USPQ 777 (Fed.Cir. 1984))

‣ if prior art fails to provide enabling method;(In re Hoeksema 158 USPQ 596 (CCPA 1968)).

The known stalwarts:

‣ commercial success

‣ long-felt need; and

‣ unexpected resultsmay also be relied upon.

ENABLEMENT

Specification should describe the invention:‣ sufficiently clear and complete‣ for invention to be carried out by a person of

ordinary skill in the art‣ from info known in the art

‣ without undue experimentation.

Factors that are used in US to determine whether disclosure is enabling (In re Wands):

‣ the amount of discretion or guidance presented in the spec

‣ the quantity of experimentation necessary‣ the presence or absence of working examples‣ the nature of the invention‣ the state of the prior art‣ the relative skill of those in the art‣ the predictability or unpredictability of the art, and‣ the breadth of the claims.  

Problematic for nanotech inventions: infancy, cross-disciplines, nature, unpredictability and complexity of the technology.

Extra care to include examples / embodiments, test data and adequate direction / guidance.

In biotech, examiners and courts have used the enablement doctrine to narrow the scope of overly broad claims. All required information: in the specification.“Incorporation by reference” is not acceptable in the EU and JP. Person(s) of ordinary skill in the art currently

‣ often Ph.D graduates

‣ due to cross-disciplinary nature also group.

Nanotechnology inSouth Africa (ZA)

Substantial activity at universities, research institutions, private companies and mining houses.

No formal nanotechnology strategy is in place yet.

Political transformation, R&D investment progressively

decreased and reached a turning point in 1997.

R&D important for a country’s global competitiveness.

ZA missed the .com wave – Government takes nanotechnology seriously and a ZA

Nanotechnology Strategy is expected to be finalised this year.

Basic nanotechnolgy research focussed on areas that are directly relevant, critical and strategic to ZA and the region.

The main drivers will be

To relieve poverty‣ Water (membrane technology)‣ Electricity (fuel cells)‣ Health (drug carriers etc).

Mineral benefication‣ gold; and‣ titanium.

Human Resources Development

Sources:

1. European Commission. Community Research. 2004. Nanotechnology. Innovation for tomorrow’s world.

2. Científica Ltd. 2003. 2nd edition. The Nanotechnology Opportunity Report.

3. European Commission. Community Research. 2004. Towards a European Strategy for Nanotechnology.

4. Koppikar, Vivek et al., 2004. Current Trends in Nanotech Patents: A View From Inside the Patent Office. Nanotechnology Law & Business, 1(1), Article 4.

5. Muenkel, Jonathan A. et al., Fitzpatrick Cella Harper & Scinto. Staking A Claim In The Nanoworld.

6. Tullis Terry K. 2004. Current Intellectual Property Issues in Nanotechnology. UCLA Journal of Law of Technology, J.L. & Tech. Notes 12.

7. Bastani B. & Fernandez D. Intellectual Property Rights in Nanotechnology. Available online: [www.iploft.com/Security(DK).pdf]

8. Halluin, Albert P. et al., 2003. Nanotechnology: The Importance Of Intellectual Property Rights In An Emerging Technology. Intellectual Property and nanotechnology. Tex Intellect Prop Law J, 11(3):220-657.

Nanotechnology

9th OPEN FORUM

November 2005

Presented by:

Adelhart KrügerDM Kisch IncSouth Africa