Nanotechnology Law: The Legal Issues

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- Application of Canadian laws to nanoscience …

- 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

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  • 1. N anotechnology Law: The Legal Issues from a Canadian Perspective Lisa K. Abe NNI Nanotechnology Innovation Summit December 9-10, 2010
  • 2. 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
  • 3. Intellectual Property protection
    • Patents
    • Copyrights
    • Industrial Designs
    • Trade Secrets
    • Integrated Circuit Topographies
  • 4. Patents
    • Recent trends
    • Can you patent an atomic or molecular structure?
    • What the requirements and challenges?
    • Tips
  • 5. 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
  • 6. 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
  • 7. 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
  • 8. Manufacture or Product?
    • Almost anything made by humans
    • No moving parts
    • e.g. nanotube
  • 9. 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
  • 10. 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
  • 11. Challenges
    • Common objections raised by Patent Examiners:
      • Anticipation
      • Inherency
      • Obviousness
      • Enablement
  • 12. Anticipation
    • Nanotech form already exists naturally or on a higher scale
    • Unless clear difference in properties
    • Tip: focus on the difference
  • 13. 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
  • 14. 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
  • 15. 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
  • 16. 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
  • 17. 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
  • 18. Copyright
    • Can you get copyright in an atomic or molecular work?
    • What are some of the challenges that nanotechnology creators face?
    • Tips
  • 19. 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
  • 20. 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
  • 21. 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
  • 22. 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 ?
  • 23. Sculpture?
    • Three-dimensional object in space
    • Form of art
    • Expressive form
    • Likely not applicable to nanotech if purely utilitarian
  • 24. Artistic Craftsmanship?
    • Unlikely to apply to nanotech if not work of an artisan
    • More industrial process vs. manual skills being used
  • 25. 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
  • 26. 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
  • 27. 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
  • 28. 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
  • 29. 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
  • 30. Pattern or Ornament?
    • Repetitive or decorative elements that distinguish
    • Usually placed on article
    • e.g. buckyballs in nanotube or nanofilm on an article
  • 31. 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?
  • 32. 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
  • 33. 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
  • 34. 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
  • 35. 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
  • 36. 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
  • 37. 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
  • 38. 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
  • 39. 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
  • 40. 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
  • 41. 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
  • 42. 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
  • 43. 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
  • 44. 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
  • 45. Lisa K. Abe 416 868 3358 [email_address]
        • 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.