Figure I6

A flowchart summarizing how to determine whether information is prior art.

In turn, this has the consequence that some inventions may be patentable in some countries even while not being patentable in other parts of the world.

However the prior art is ultimately defined in any given country, the twin requirements of novelty and nonobviousness10 must be met for an invention to be patentable. Whether an invention is novel is by far the easier of these requirements to apply. The concept of obviousness is much more difficult. Something that is obvious to one person may well not be obvious to another, particularly if these people have different levels of expertise in the technology. But most insidious is that determining whether some advance was obvious is always done after the fact. We all have experiences where we were initially unable to grasp some concept or to see the solution to some problem. But after it is explained to us, we suddenly find ourselves in a state of astonishment that we were unable to see the answer because it now seems so simple and apparent.

This natural tendency to view circumstances differently with the benefit of hindsight is very much recognized by courts. Much effort has therefore been expended to set forth an objective standard by which obviousness can be evaluated. The essence of this standard attempts to place us back in the shoes of the inventor by focusing on what was known in the prior art. An invention is obvious if all its elements were known in the prior art and there was some reason to combine them in the manner of the invention that can be reasonably articulated.11 Although there is no requirement that it be applied rigidly, one recognized way of articulating such a reason is to show that there was some teaching, motivation, or suggestion in the prior art itself to make the combination. In this way, the standard recognizes that many inventions result from combining elements that are well known. In considering the creative process of inventing, one court has aptly observed that "[o]nly God works from nothing. Men must work with old elements."12

iv. Obviousness and Scale Factors

An issue of particular relevance to nanotechnology is the extent to which the law considers it obvious to reproduce something that is known, but at a different scale. There are some significant indications that merely changing the scale of some known structure or process is not, by itself, patentable.13 This is a reasonable position in many circumstances. For example, if changing the scale involves no new technological issues and provides nothing that can in any way be characterized as unexpected, it hardly seems to warrant a patent.

Consider, for instance, a toy manufacturer who builds an exact replica of a Ferrari, but so that it is roughly the size of a large dog or pony. Such a miniFerrari might find some success in being marketed as an actual working car. In this example, the Ferrari replica is identical in every way to a full-size Ferrari—it has exactly the same structure, right down to the least significant nut and bolt. This replica might represent a spectacular feat of engineering to reproduce the structure so exactly at a smaller scale. But if the only challenge in making it was scaling down something that was already known, it does not represent a patentable invention.

Now contrast this circumstance with development of the nanocar described at the beginning of this section. The nanocar is hardly a replica of a macroscopic-scale car—it does not function in anything like the manner of a conventional automobile and has a significantly different structure. Indeed, the reasons why it is described as a nanocar are largely superficial and mostly represent an attempt to draw a cute analogy with technology that is widely familiar. The development of the nanocar is patentable over the prior-art macroscopic car because the technical challenges that needed to be overcome were not expected from what was known about conventional cars. It was not simply a matter of taking the blueprints for a Ferrari and scaling them down. Specific challenges were presented in the need to accommodate a variety of small-scale effects that are inapplicable at large scales—the effects of molecular interactions on the scale of the nanocar itself, quantum mechanical effects, an entirely different form of "friction," and a host of similar issues.

What is relevant in evaluating the patentability of the nanocar is whether there was anything unexpected: Were there manufacturing difficulties that were unforeseen in light of prior art cars? Were there advantages in ways of using the nanocar that could not have been predicted from the structure of prior-art cars? Were the ways in which the nanocar could be assembled surprising, even to experts in assembling conventional cars? It is an affirmative answer to these types of questions that points to the nanocar not being obvious over the prior art, and therefore patentable.

Of course, a comparison between conventional cars and nanocars is a rather extreme example. A nanocar is roughly one-billionth the size of a conventional car, making it easy to see that there would be a number of unexpected aspects to achieving its construction. In reality, the comparison between a nanotechnology invention and the prior art is never going to involve such a large difference in scale. The area of nanotechnology that is most likely to confront issues of scale changes is that of nanoelectromechanical systems (NEMS). These are mechanical structures made on the nanometer scale that are driven by electrical energy—very small gears, pumps, sensors, actuators, and so forth.

The way such structures are constructed may be very similar to the way microelectromechanical systems (MEMS) are constructed, using the same basic techniques and similar types of component parts. In comparing NEMS with MEMS, the difference in scale might be only a factor of ten or so—comparable to the scale difference between a Ferrari and the replica described earlier; the physical issues that are confronted could therefore be very similar. Indeed, researchers in the area of small electromechanical systems sometimes have difficulty in characterizing a particular structure as a MEMS device versus a NEMS device because there is a continuum in scale with no clean division between the two. Attempts to patent NEMS devices could very well confront difficulties posed by relevant prior-art MEMS devices. The same calculus described earlier applies—if the NEMS device (Figure I.7a) is just a scaled-down version of a MEMS device (Figure I.7b), was something unexpected encountered? It is easier to see that the answer to this question will be "no" when the scales of the devices being compared are closer.

v. Recap

For a patent application to be allowed, it must meet every one of the criteria outlined earlier. Each and every claim in the application must define an invention that represents patentable subject matter, is useful, is novel and not obvious over the prior art, and is supported by a written enabling description that sets forth the best mode for practicing the invention. Any claim that fails to meet each of these requirements is invalid.

The role of the patent examiner is to review the application and the prior art to ensure compliance with these requirements. This examination has an important role to play because it affords claims in issued patents a legal presumption that they are valid. The very fact that the claims have been reviewed by an examiner and found to meet every one of the requirements described above increases the burden on someone later trying to assert that a claim is not valid. If there is a close call trying to decide whether a claim is valid, this presumption will cause the decision to fall in favor of the patent holder.

0 0

Post a comment