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Patentable Novelty in Nanotechnology Inventions: a Legal Study in Iraq and Malaysia

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Abstract

Nanotechnology has been facing multiple obstacles related to the applicability of patentability criteria. In this article, the authors addressed the novelty requirement in nanotechnology inventions in Iraqi and Malaysian patent acts. First, novelty was discussed to determine its applicability in the field of nanotechnology. Then, problems on nanotechnology patent application were presented along with some suggested solutions. The problems encountered in the patentability of nanotechnology inventions were summarized in two categories. First, the multidisciplinary nature of nanotechnology casts its shadow on the examination process in patent offices. To overcome this problem, the United States Patent and Trademark Office and the European Patent Office created new divisions to examine nanotechnology inventions; thus, this step must be followed by developing countries. In addition, with the existence of larger scaled materials and devices in prior art, three potentials have been introduced to overcome this issue. First, novel properties in nanoinventions can be demonstrated to reach the point of novelty. Second, nanoinventions can be patentable if they are carried out despite scientific problems occurring when materials are shaped in nanoscale. Third, the process of creating nanomaterials can be patentable as the bottom-up approach, which is not used in larger scaled materials. Finally, pre-disclosure must be considered as an enabling disclosure, which enables a skilled man in the art to put the nanoinvention in practice.

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Notes

  1. Some confined the diminution to 1 to 100 [9].

  2. David Koepsell, Let’s get small: an introduction to transitional issues in nanotech and intellectual property. Nanoethics, (2009) 3(2):157–166, p. 163.

  3. However, there is debate about the role of developing world in the post-nanotechnology era. A strong fear has been addressed that the south will become dependent on the north in nanotechnology as developing countries are unable to domestically develop nanotechnology [9]. This fear, though, does not change the fact that we are entering the nanotechnology era, the sole way to deal with is to enhance the innovation environment through the legal framework inter alia.

  4. Atlantic Works v. Brady [1882] 107 US 192.

  5. Section 14 (2) in Malaysian Patent Act and Section 2 (2) in the British Patent Act , William Cornish and David Llewellyn, p. 184, para 5–12.

  6. EPC and UK PA, Malaysia, Iraq… this approach is called the absolute novelty.

  7. Section 102 states: “a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.” Based on this section, an oral disclosure outside America is irrelevant in the novelty test.

  8. Article 4 in the Patents, Industrial Design, Undisclosed Information, Integrated Circuits and Plant Variety Act No. 65 of 1970 states: “An invention shall not be considered as new in the following three cases: a) If, the invention has been publicly worked out in or outside Iraq, or if the description or drawing of the invention has been publicized in periodicals within Iraq or outside it in such a clear way that enables experts to exploit.”

  9. Article 5 in the Iraqi Act states: “a person who, in good faith, has used or manufactured the invention before the filing date of invention shall have the right to continue his use,” to uphold the right to work doctrine and to avoid any undesirable conflict in this approach to novelty, which excludes many classifications of disclosure from being novelty destroying.

  10. The Japanese legal system between 1950s and 1970s utilized local patent standards to facilitate transfer of technologies by persuading holders of foreign patents to re-patent their invention in Japan.

  11. Stead v. Williams [1943–1944] 2 WPC 126; therein, (at 142) Tindal, C.J., stated: “the public cannot be precluded from the right of using such information as they were already possessed of at the time the patent was granted.”

  12. See Section 11 (2) b of the Malaysian Patent Act, Section 101 (e) 1 in the US Patent Act.

  13. For instance, Section 14 (2) of Malaysian Patent Act states “Prior art shall consist of: … (b) the contents of a domestic patent application having an earlier priority date than the patent application referred to in paragraph (a) to the extent that such contents are included in the patent granted on the basis of the said domestic patent application.”

  14. Alexander Milburn Co. v. Davis Bounrnonville Co. 270 US 390 (1929), At 401

  15. Article 4 (1) (a) requires the claimed invention to have been publicly worked or publicized to plainly exclude the secret art. However, the Malaysian Patent Act in Section 14 (2) (a) considers everything disclosed to the public part of the prior art.

  16. Section 2 (2)

  17. Article 54

  18. The leading case regarding this issue is Merrell v. Norton [1996] RPC 76, 86 (HL); therein, the House of Lords held that secret use is not anticipatory.

  19. Bayer’s Application (G 6 /88) [1990] O.J. EPO 114/wlliam p25

  20. In this context, Jacob justified the invalidation of a patent according to the use of the applicant himself in Milliken Denmark AS v. Walk Off mats Ltd by saying: “… (the rule) provides a ‘bright line’ test to avoid subjectivity and most questions of degree (‘undue burden’ remains). Nor does it seem harsh when one considers that the patentee can protect himself by applying for a patent before making the product available to the third party …,” at 311.

  21. Article 4c in Iraqi Act and Section 11 (3) a in Malaysian Act

  22. Ore concentration Co (1905) Ltd v. Sulphide Crop Ltd (1914) 31 RPC 206 at 224

  23. In Monsanto’s Application (1971), it was held that a mere membership in the same organization does not create the obligation of confidence.

  24. Article 4 (c) in the Iraqi Act and Section 11 (3)(b) in the Malaysian Act

  25. Section 1 (4) c in the UK Patent Act 1977

  26. Priority date has a double function in which the available information will be considered as a part of the prior art; in addition, the application will be, in that time, part of the state of art.

  27. The Arabic word “,” which means “or,” is used in two situations: in enumerating the options or interpreting the former expressions by the latter one. In this statement, the context refers to the second use.

  28. Wheaton and Donaldson v. Peters and Grigg 33 US. 591 (1834), the court stated that “it is worthy of notice, that the act does not recognize as a natural right, or in any manner provide for the protection of mechanical inventions” at pp. 682–683.

  29. Another approach suggests that we should start with the state of art and then go on to construe the claimed invention [6].

  30. It was established in Knapp v. Morse 150 US 221 (1893).

  31. General Tire & Rubber Co v. Firestone Tyre & Rubber Co Ltd & Ors (1972) RPC 457, at 485

  32. According to the Lord Jauncey in the prior disclosure will invalidate later inventions “… if the earlier relevant application not only describe the invention but also contains an enabling disclosure there anent”; Asahi Kasei Kogyo KK’s application [1991] RPC 485 (at 547)

  33. The distinguishing lines between the two phrases will be minimized if we use the objective test, which involves irrefutable presumption of disclosure rather than factual disclosure.

  34. Bayer’s Application (G 6 /88) [1990] O.J. EPO 114/wlliam, p. 25

  35. Merrell Dow v. Norton [1996] R.P.C 76, HL/willam, p. 38

  36. Verdegaal Brothers v. Union oil co. 814 F.2d 628

  37. Hansgring v. Kimmer, 102 F.2d 212; 40 USPQ 665 (CCPA 1939)

  38. Re Zierden 411 F.2d 1325: USPQ 102 (CCPA 1969)

  39. King 801, F.2d 1324; 231 USPQ 136, 138 (Fed Cir. 1986)

  40. Fometo v. Mentmore [1956] R.P.C 87, CA at 155/wiilam, p. 27

  41. Van Wonterghem T1022/99 (4 October 2001)

  42. Hoechst Cleanses Crop v. BP Chemical Ltd [1998] FSR 586 at 601

  43. Von Heyden v. Neustadt (1880) 50 LJ CH at 126 there is an exemption when on document refers to another one

  44. Nissan’s Fuel Injector Valve Application OJ EPO 1987, 369

  45. See US Patent No. 5,653,951

  46. See US Patent No. 5,627,140

  47. See US Patent No. 7,573,401

  48. See US Patent No. 7,595,112

  49. See US Patent No. 7,618,216

  50. See Patent No. 4663,230 “Hyperion patent”

  51. See US Patent No. 7,749,299

  52. See US patent No. 7,575,807

  53. This method has been patented with US Patent No. 5,364,683(1993)

  54. See US Patent No. 5,482,601, see also US Patent No. 7,625,545

  55. See US Patent No. 7,591,989

  56. See US Patent No. 7763229

  57. It was the subject of US Patent No. 7829055

  58. Nissan’s Fuel Injector Valve Application OJ EPO 1987, 369

  59. However, there are many other concerns about nanotechnology.

  60. Peerless Equipment Co. v. W.H. Miner Inc 93 F.2d 98 (1937) at 103

  61. Kuehmsted v. Farbenfabriken of Elberfeld Co., 179 F. 701 (7th Cir., 1910)

  62. Union Carbide Co. v. American Carbide Co., 62, 2 Cir., 181 F. 104, at 106–107

  63. T 0206/83, 1986, p. 11

  64. The precise size of the particles means all dimension measured by nanometers.

  65. US Patent No. 6,846,474 (2003)

  66. US Patent No. 5,852,306 (1997)

  67. T0547/99-3.3.3.2002

  68. At p. 7

  69. At p. 7

  70. T0006/02-3.3.7.2002

  71. At p. 1

  72. At p. 10

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Authors and Affiliations

  1. Faculty of Law, University of Kufa, Najaf, Iraq

    Nabeel Mahdi Althabhawi

  2. Faculty of Law, UKM, Kuala Lumpur, Malaysia

    Nabeel Mahdi Althabhawi & Zinatul Ashiqin Zainol

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  1. Nabeel Mahdi Althabhawi
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  2. Zinatul Ashiqin Zainol
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Correspondence to Nabeel Mahdi Althabhawi.

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Althabhawi, N.M., Zainol, Z.A. Patentable Novelty in Nanotechnology Inventions: a Legal Study in Iraq and Malaysia. Nanoethics 7, 121–133 (2013). https://doi.org/10.1007/s11569-013-0173-7

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