Whenever progress is made in researching a new technology, a flurry of patent applications is sure to follow. We are seeing this now with graphene, as companies and universities submit applications to patent offices around the world, seeking the coveted "first to file" status that will give them the upper hand in obtaining protection for graphene-based innovations. But although securing an early filing date for a patent application is always important, a well-thought-out intellectual property (IP) strategy is not limited to merely being "first". The process of securing patent protection and the decisions made along the way are also important. A good IP strategy will evolve as your organization, your technology and your commercialization programmes develop.

Nanotech patent considerations

In nanotechnology, as in many other areas of technology, it is common for concepts to be theorized and developed in research institutions and later implemented and commercialized by companies. Consider quantum dots. These semiconductor nanoparticles are small enough (10 nm) to exhibit quantum confinement and other properties absent in bulk materials, and they were discovered in the mid-1980s by Louis Brus of Columbia University, US. Since then, several companies have found ways to exploit them in commercial applications. Thanks to these companies’ efforts, quantum dots have now been incorporated into various devices, including high-end TV displays, lighting and medical imaging.

Regardless of whether a business begins life as a spin-out, a larger company or a private venture, many of the considerations that feed into an effective IP strategy are similar. For example, to obtain a patent, applicants need to do more than just show that their idea is novel and inventive. They must also demonstrate that they have successfully developed the product or process they claim as their invention. In other words, they must prove that it is more than a mere theory or hypothesis. This is known as the "enablement" requirement, and it is particularly important for nanotechnology. Many materials have been theorized that could potentially form the basis of a platform technology – a breakthrough technology upon which new devices, methods and applications can be based – but until there is evidence that these materials have actually been created, they fall foul of the enablement requirement.

If a new material has been isolated and characterized, but only in minute quantities, it may be difficult to justify the investment involved in trying to patent the material unless there is a clear commercial application. Graphene is a good example. The existence of this single-layer carbon allotrope had been generally accepted in the academic literature for many years, but the actual material had proved extremely difficult to isolate and characterize. Only after methods were developed to produce greater quantities of the material was there a business case for filing patent applications around graphene and its commercial orphan.

Once it became possible to produce graphene on a larger scale, the strategic question shifted from "Should we patent?" to "What should we patent?" Patenting the material itself might seem like an obvious strategy. However, when a new material has been produced (even if only in minute quantities) and characterized in a published research paper, it is unlikely that you will subsequently be able to patent it. This is because it will probably fail the "novelty" requirement, which states that the product or process claimed as the invention must not have been publicly disclosed before you seek to patent it. Again, graphene is a good example: long before it could be produced commercially, it had already been isolated and characterized in small quantities by researchers at the University of Manchester, UK, who published their work and thereby precluded patent protection for the material itself.

Savvy strategies

In such situations, nanotechnology companies must look for other ways to protect the fruits of their research. One option is to characterize the new material with reference to a unique property – perhaps its purity range, if this provides some commercial advantage. However, such a strategy would not prevent competitors from producing the material at different purities if they can work out how to do so. Another option might be to patent a new method of producing the material, which would prevent others from using the same process. Alternatively, new devices incorporating the material might also be patentable.

We can see how this works in practice by examining the strategy adopted by Nanoco Technologies, which spun out from the University of Manchester in the mid-2000s to commercialize quantum dots. Nanoco’s initial patent applications related to new methods of manufacturing commercially relevant quantities of quantum dots with sufficiently good optical properties to enable commercial exploitation. The company went on to patent solutions to problems holding back the commercial exploitation of quantum dots, including ways to produce commercial quantities of quantum dots free of cadmium and other toxic heavy metals, again with optical properties suitable for commercial exploitation. After obtaining patents on methods of production, Nanoco was able to patent a wide range of applications of their quantum dots, such as ink formulations, photovoltaic cells and LEDs. These patents enabled the firm to prevent competitors from manufacturing quantum dots via alternative routes and then commercially exploiting them in this group of applications.

Focused protection

Another consideration for organizations looking to protect their technologies through patent rights is the scope of protection they wish to obtain. It can be tempting to file speculative applications to try to achieve the widest possible scope of protection. However, while it might be possible to obtain a wide scope of protection from one patent office, it does not follow that other patent offices around the world (or the national courts, should you ever have to defend or enforce your patent after it is granted) will allow you the same scope of protection. It is important to bear in mind that just because a patent is granted, that does not mean its validity cannot be challenged at a later date, and a patent of broader scope is inherently more susceptible to a challenge than a narrower patent. Opting to seek more focused patent protection often also reduces the cost and time taken to obtain a granted patent. The sooner you have your patent in place, the sooner competitors will pay attention to it, and the sooner you can enforce it.

Savvy companies will always have an eye on the medium-to-long term (not least because patents last for 20 years from filing), and will establish a patent strategy based on realistic expectations of the scope of patent protection they can obtain. At the same time, companies must ensure the patent applications they file will present a significant commercial threat to their competitors. Potential investors and licensees will carry out due diligence on a company’s patent portfolio before investing, and this process will generally flag up weak or overly ambitious patent applications. Ultimately, shrewd tech investors will not invest in a company if its patents do not stand up to scrutiny.

In the rush to get a patent application on file and keep competitors out of the market, research organizations and private companies alike have often fallen foul of the statutory patentability requirements. These are designed to ensure that patents are only granted for technologies that are novel, inventive and backed up by the required level of experimental evidence. In many cases, such slip-ups resulted from the lack of a properly informed strategic plan and a clear commercial goal from the outset. A technology company without a robust patent strategy will find investors hard to come by. In a developing area like nanotechnology, where the possibilities for new platform technologies abound, patent applicants can be particularly vulnerable to these strategic pitfalls. Astutely navigated, however, the patent system provides nanotechnology businesses with rich rewards and a commercial incentive for further research and development.

  • This article first appeared in Physics World.