Nanotechnology Law: The Legal Issuesfrom a Canadian Perspective

Lisa K. Abe

NNI Nanotechnology Innovation Summit December 9-10, 2010

Introduction

• Application of Canadian laws to nanoscience• Intellectual Property (IP) protection• Challenges faced by nanotech creators• Other legal and public policy issues• Liability risks • Need for legislative change

Intellectual Property protection

• Patents• Copyrights• Industrial Designs• Trade Secrets• Integrated Circuit Topographies

Patents

• Recent trends• Can you patent an atomic or molecular structure? • What the requirements and challenges?• Tips

Recent trends

• 1997-2002 nanotech patents in the US grew by 600%• As of Dec. 2003, approximately 7,000 nanotech patents• New patent class 977 has 490 new patents (18 months ago)• Similar situation as with first biotech patents

Can you patent an atomic or molecular structure?

• Patentable Subject Matter• Utility patent:

• Canada - art, process, machine, manufacture or composition of matter

• U.S. - product, process, apparatus or composition of matter

• Design patent:• New, original and ornamental design for an article of

manufacture

Machine or Apparatus?

• Embodiment in mechanism of any function or mode of operation designed to accomplish a particular effect

• Mechanical or electrical device with co-operating parts to perform some function

• e.g. nanocomputer

Manufacture or Product?

• Almost anything made by humans• No moving parts• e.g. nanotube

Composition of Matter?

• A product where the nature of the material is the distinguishing characteristic

• Atomic manipulation results in novel physical and chemical properties• Strength, flexibility, conductivity, insulating properties, etc.• e.g., buckyball with unique physical properties

Utility, Novelty and Non-obviousness

• Utility: usefulness beneficial to the public, so that when put into practice by a competent person, the invention will do what is promised by the patent

• Novelty: new and not subject of earlier patents. In Canada, also not previously made available to the public

• Non-obvious: intuitive and not obvious to a person skilled in the art or science to which it pertains

Challenges

• Common objections raised by Patent Examiners:• Anticipation• Inherency• Obviousness• Enablement

Anticipation

• Nanotech form already exists naturally or on a higher scale• Unless clear difference in properties

• Tip: focus on the difference

Inherency

• A prior art reference may “inherently” anticipate a claimed invention

• If a nanotech invention would necessarily and inherently result, it would likely be denied patentability

Obviousness

• A difference in size may be viewed as obvious• Test: what would prior art suggest to one of ordinary skill in

the art?• If prior art did not enable one to make a nanoscale version

(i.e. no process existed), it may still be non-obvious even if only difference is size

• Tip: focus on the process or solution

Obviousness

• Solution to new problem arising on a nanoscale may be claimed as the invention

E.g. solution to quantum electron spin instability on nanoscale data storage device

• Invention also in new uses for a known composition in a particular environment

• Tip: focus on the difference in environment

Enablement

• Need full disclosure of invention such that one skilled in the relevant art can be taught how to make or carry out the invention

• Problem if too broad nanotech patent claims• Technology difficult to prove or analyze• U.S. allows post-filing date test results to demonstrate

claimed invention works

• Tip: beware of scope of nanotech claims; ensure you can prove/demonstrate

New trends

• U.S. Class 977 for Nanotechnology• To facilitate searching of prior art• Will ultimately be replaced by cross-reference art collection

classification schedule, including definitions, subclasses and search notes related to classifications in other U.S. classes

• Problems with initial wave and cross-disciplinary filings

Copyright

• Can you get copyright in an atomic or molecular work?• What are some of the challenges that nanotechnology

creators face? • Tips

Copyright

• Subject Matter: original literary, dramatic, musical and artistic works

• Requires fixation - the form of expression• Requires authorship - human creation • No registration required – author is automatically first owner

unless employee

Originality

• Not same as novelty• Relates to expression, not the idea itself• Work not copied• Work not in public domain• Requires skill and judgment

• Tip: focus on skill and judgment used in creating the work

Literary Work

• Notes, instructions, tables, computer programs• Includes compilations - selection, arrangement and

combination of items in a useful form is authorship• Nanocomputer programs and databases likely protectable

Artistic Work

• Paintings, drawings, maps, charts, plans, photos, engravings, sculptures, artistic craftsmanship, architectural works and compilations of artistic works

• Pictures, images, drawings of nanotech likely protectable• What about an arrangement of atoms – can they be a

sculpture, artistic craftsmanship or architectural work?

Sculpture?

• Three-dimensional object in space• Form of art• Expressive form• Likely not applicable to nanotech if purely utilitarian

Artistic Craftsmanship?

• Unlikely to apply to nanotech if not work of an artisan• More industrial process vs. manual skills being used

Architectural Work?

• Protection for structures and buildings, tennis courts, gardens• Not tables, boats• Must be for humans• Is it possible to argue nanotech is form of molecular

architecture?• Might need to be associated with a building

Useful Articles

• Not infringement of copyright or moral rights (s.64 & 64.1 Copyright Act)

• If artistic work is functional or utilitarian• Unless nanotech creation turns out not to work

• Tip: put some artistic element into the nanotech creation e.g. embedded drawings, arrangement into shapes that don’t affect functionality

Industrial Designs

• Can you get industrial design protection in an atomic or molecular work?

• What are some of the challenges that nanotechnology creators face?

• Tips

Industrial Designs

• Features of shape, configuration, pattern or ornament and any combination that, in a finished article, appeal to and are judged solely by the eye

• Need originality• Likely not protectable where design dictated by utilitarian

function as opposed to aesthetics, but let’s analyze nanotech

Shape or Configuration?

• Shape = outline or external form/appearance• Config = idea of external form and construction; arrangement

and physical relationship of the components of the design• Susceptible to variation• Arguable may apply to nanomolecule or nanotube

Pattern or Ornament?

• Repetitive or decorative elements that distinguish• Usually placed on article• e.g. buckyballs in nanotube or nanofilm on an article

Finished Article?

• Article = anything made by hand, tool or machine• Finished = physical embodiment• Are carbon-carbon bonds and atoms a design in, or applied

to, a finished article?

Appeal and Judged Solely by the Eye?

• Usually unmagnified image• But nanotechnology has created new products with different

type of consumer, e.g. a scientist• Law may be out of date here

Utilitarian Function Limitation

• The main problem for nanotech• No protection as industrial design if:

• Features applied to a useful article that are dictated solely by utilitarian function of that article; or

• Any method or principle of manufacture or construction

• Tip: put some artistic element into the nanotech creation e.g. embedded drawings, arrangement into shapes that don’t affect functionality

Integrated Circuit Topographies (ICT)

• Can you get ICT protection in nanotech IC topography?• Statutory protection for “topography”

• Design of interconnections and elements of integrated circuit product; or

• Elements and interconnections of layer added to integrated circuit product

• Integrated circuit product = product intended to perform electronic function and in which elements and interconnections formed on material

Integrated Circuit Topographies

• Is molecular or atomic scale interconnection in or on a piece of material?

• Material neutral• Requires originality

• Not copied; and• Intellectual effort and not commonplace

• Might apply to nanotech if not automatic circuit

Trade secrets

• Can you get trade secret protection in an atomic or molecular work?

• What are some of the challenges that nanotechnology creators face?

• Tips

Trade Secrets

• Protected by contract, duty of confidence, fiduciary duty, Quebec Civil Code, or other causes of action

• No exclusive rights with owner• Must establish and maintain secrecy

• Tip: keep nanotech secret and disclose only under confidentiality agreement – unlimited duration for protection

Other Legal and Public Issues

• Should new forms of atoms and molecules be entitled to IP protection? What if they are later discovered to exist in nature?

• Regulation, e.g. export controls, medicine, medical devices• Taxation of “goods” too small to be seen• Competition implications

• Restraint of trade• IP protection and grant of licenses

Other Legal and Public Issues

• Government surveillance, privacy, security• Nanotech materials for surveillance, data storage,

eavesdropping• Genetic research and new life forms

• As we increase our understanding of the building blocks of life and matter, at what point does a man-made creation become a life form with “human” rights

• Health, safety, environmental issues (similar to asbestos and insulation cases) – unknown risks if new nanoparticles enter human systems or environment

Liability Risks

• IP infringement of things too small to be seen• IP enforcement of atomic or molecular copying, use or sale• Environmental liability • Tort (negligence) liability for breach of duty of care• Product liability• Privacy violations

Need for legislative change

• Canada’s IP laws may need to be amended to protect new forms of creativity, nano-authorship or inventorship, unforeseen and unconventional kinds of property

• Copyright law may need to be amended to:• Clarify the fixation requirement, when dealing with works on

an atomic level• Protect creations by nanomachines (non-human agents)• Protect nanotech creations in architectural works

Need for legislative change

• Patent law may need to be amended to:• Encourage research into nanotech, particularly where

invention might already exist naturally or on a higher scale• Permit post-filing date test results to demonstrate claimed

invention works• Have a new patent class to facilitate searching of prior art• Protect new life forms

Need for legislative change

• Industrial designs law may need to be amended to:• Protect nano-sized designs or architectures• Clarify that atomic and molecular structures can be “finished

articles”• Expand upon the requirement for appeal and judgment

“solely by the eye” – new breed of consumer using microscope

• Integrated Circuit Topography law may need to be amended to:• Clarify molecular or atomic scale interconnection is in or on

a piece of “material” • Deal with creation of automatic circuits

Need for legislative change

• New laws for genetic research, rights of new life forms• Export controls• Taxation• Competition• Regulation of R&D, goods and devices, to reduce risk of

harm to public

Lisa K. Abe 416 868 3358

labe@fasken.com

This presentation contains statements of general principles and not legal opinions and should not be acted upon without first consulting a lawyer who will provide analysis and advice on a specific matter.Fasken Martineau DuMoulin LLP is a limited liability partnership under the laws of Ontario and includes law corporations.