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PATENT PROTECTION IN THE NANOTECH PLATFORM CASE
LAW OF THE EPO BOARD OF APPEAL Claudio
Germinario Claudio.germinario_at_sib.i
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PATENTABILITY REQUIREMENTS
NOVELTY   INVENTIVE ACTIVITY INDUSTRIAL
APPLICABILITY SUFFICIENCY OF
DISCLOSURE CLARITY
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Novelty

• The Invention is novel when
• ..at the filing date of the application it was
  NOT made available to the public by any means
• Written description (literature poster
  patent),
• oral disclosure (conference)
• prior use (use, sell, sell offer etc).

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Red Fluorescent Protein (RFP) -Nature, Vol. XX,
pp 245-49 (2004)- 
In the Macro world This same protein will not
be able to be patented anymore
Red Fluorescent Protein having amino acid
sequence Met Leu Pro Ala Val Pro Pro Gln Gln Trp
Ala Leu Ser Ala Gly Asn 1 5
10 15
Gly Ser Ser Glu Val Glu Val Val Pro Phe Gln
Glu Val Trp Gly Arg 20
25 30
Ser Tyr Cys Arg Ala Leu Glu Arg Leu Val Asp Val
Val Ser Glu Tyr .. 35
40 45
capable of emitting fluorescence with a maximum
of 583nm and extinction coefficient of 22500
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From Macro to Nano
Nanocrystals of Red Fluorescent Protein having
amino acid sequence Met Leu Pro Ala Val Pro Pro
Gln Gln Trp Ala Leu Ser Ala Gly Asn 1
5 10
15 Gly Ser Ser Glu Val Glu Val Val Pro
Phe Gln Glu Val Trp Gly Arg
20 25 30
Ser Tyr Cys Arg Ala Leu Glu Arg Leu Val
Asp Val Val Ser Glu Tyr .. 35
40 45
Is this nano-protein novel over that
disclosed in the literature ?
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Decision T 0020/94 (Amorphous structure) 
Invention
Prior art
NOVELTY YES
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Decision T 0031/01 (Mineral filled Composition) 
Invention prior art
NOVELTY YES
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Decision T 0509/92 (Dipeptide crystals)
Aspartame Type IIa
Aspartame Type III
NOVELTY YES
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One could predict that a substance claimed in
nano-form, for instance as nano-crystals, should
be considered novel vis-à-vis the same substance
known on macro/micro-scale
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Decision T 0915/00 (Nanocrystalline metals) 
This material was recognized novel over a
substantially identical material disclosed in the
literature, comprising normal (macro) crystalline
Nickel obtained by electrodeposition 
A nanocrystal nickel material obtained by
electrodepositionand having cristall size of
less than 11 nm
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Decision T 0915/00 (Nanocrystalline Nickel) 
crystals
Nanocrystals
Invention
Prior art
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Decision T 0006/02 (Cigarette filter)photodegrad
able filter
TiO2 nano 100nm invention
TiO2 micro 500nm Prior art
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The THEORY Of INHERENCY 1.
 Nanotechnology is not simply the technology of
the infinitesimally small, but
the technology of the infinitesimally small
accompanyed by at least one novel technical
effect directly resulting from the nanosize.  
(chemical, physical or biological).
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THE THEORY Of INHERENCY 2.
Nanocrystals of Red Fluorescent Protein having
the amino acud sequence Met Leu Pro Ala Val Pro
Pro Gln Gln Trp Ala Leu Ser Ala Gly Asn... 1
5 10
15 capable of emitting
fluorescence with a maximum of 514 nm (583) and
extinction coefficient of 84000 (22500)
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Nanocrystals of Red Fluorescent Protein having
amino acid sequence   Met Leu Pro Ala Val Pro
Pro Gln Gln Trp Ala Leu Ser Ala Gly Asn... 1
5 10
15 capable of emitting
fluorescence with a maximum of 583 and extinction
coefficient of 22500 and capable of freely
permeating the cellular membrane
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In the Macro
The discovery of a novel property of a known
substance DOES NOT reinstate the novelty of the
same substance.  In fact, the novel property is
considered INHERENT in the known substance.
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In the Nano
Therefore It cannot be affirmed that the novel
property exhibited by the material at nanoscale
was inherent in the same material known at
macroscale.
The novel properties characterizing a material in
nanocrystal or nanoparticle form are not
retrieved on the same material at macro scale
though purposely looked for.
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Conclusion
the prefix Nano, unlike the prefix
Recombinant in the biotechnology, may be able
to reinstate the novelty of a known substance or
material, specifically when accompanied by a
novel technical effect.
If this hypothesis proves valid
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Inventive Activity
The claimed subject-matter implies an inventive
activity if for the skill person it is not
obviously derivable from the state of the art
(e.i. Literature).
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DNA based integrated circuit EP-A-1 300 892
A method for storing information in DNA WO
2004/088585
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Some Questions

• Who is the man skilled in the art?
• What is the relevant technical field ?
• Does the downscaling to nanosize endow the
  invention with an inventive step ?

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Some Answers
The skilled person a team of persons, each
expert of a different technical field, for
example gene manipulations and semiconductors.
  The relevant technical field. The sum of all
the fields overlapped by the invention.
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Is Downscaling Inventive ?
In the macro NO T 0070/99 (Analytical
devices) The easy miniaturisation of a device or
of an equipment is suggested by the well known
industrial interest of optimizing space and
materials.
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It is well known that the top-down method has
technical limits.
Overtaking these limits by an alternative
top-down method or by novel bottom-up methods,
that means overtaking the limits of available
technology could never a priori be regarded as
obvious.
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Acquired Novel Property
...when the miniaturisation is accompanied by an
unpredictable effect, the result of
miniaturisation should always be regarded as
inventive
..regardless of the apparent obviousness of the
means used to achieve the result.
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Decision T 0952/01 (Method of coating a
substrate)
 .. Coating dispersion comprising solid
particles of size 20-70 nm resulting in a special
effect. This effect was lost for particle of
size 70 e 100 nm. Essentially identical coating
dispersions were disclosed in the prior art, but
comprising particles of 100 500 nm.
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Decision T 0453/97(Antireflective coating for
use in photolithography)
...an antireflective Titanium Nitride (TiN) layer
having thickness between 25 and 40 nm minimized
the percent of reflected radiation to less than
5. In the prior art Ti nitride of 100 nm with
reflected percent of 30
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T 0453/97
Reflected 5 25 e 40 nm
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Reasonable expectation of success
Therefore the realization of a suggestion is
accompanied by a reasonable expectation of
success. gt No inventive activity.
In traditional technical fields  Procedures
are  known,  standardized,  normally
reproducible.
gt Results predictable
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In a Pioneer Field 
The procedures are NOT necessarily known,
standardized and repeatable Minor experimantal
modifications may strongly affect the expected
results.
..An attempt to realize a suggestion is
accompanied by a low expectation of success. gt
Achieving the desired result may prove
inventive...
Risults unpredictable
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Decision T 0915/00(Nanocrystalline Metals)
  The Board affirmed that.. ...the skilled
person had no obvious reason to foresee that the
prior teaching could still be successfully
extrapolated to structures smaller by at least
two orders of magnitudes, if not with the benefit
of hinsight..
..the invention was a process for
electrodepositing nanocrystalline Nickel As
many as eight prior documents suggested the
invention, but in the context of the
microcrystalline structures (gt 1 micron).
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Sufficiency of Disclosure
The patent application shall describe the
invention in a manner sufficiently clear and
complete for it to be carried out by the skill
person.
Sufficiency of Disclosure gt Repeatability of
the invention
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Interpretation Given by Case Law
       Sufficiency of disclosure The skilled
person must be able to realize the invention
essentially over the whole claimed ambit. The
realisation of the invention, (achievement of the
declared effects) may not depend on chance.
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Generalization of Parameters
On Nano-Scale  ..The effect characterizing the
invention depends on the size of the material and
other parameters.. ..the arbitrary
generalization of sizes or parameters gt.. loss
of repeatability of the invention.
On Macro-Scale  ... the claimed subject-matter is
normally a reasonable generalisation of the
real invention,
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T 0453/97
Riflected 5 for 25 e 40 nm
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Not Investigated Equivalents
On Nano-scale If the application comprises
examples of one sole embodiment of the invention,
gt protection for not sufficiently investigated
equivalent embodiments, may prove difficult to
be granted
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Equivalents
T 0288/02 Invention Process of molecular beam
epitaxy using as doping agent atomic Nitrogen
radicals. Prior artProcess of molecular beam
epitaxy using as doping agent atomic o molecular
Nitrogen radicals.
  The use of molecular Nitrogen radicals was
the sole described in the prior art with all
experimental details and examples ..
The Board considered that the embodiment atomic
radicals was merely speculative thus not
sufficiently disclosed
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Equivalents 2
T 915/00  Generalization
Generalization accepted only because two
subsequent documents substantiated the
repeatability of the process also with metals
other than Nickel otherwise no generalization
accepted
NICKEL In examples
METALS In the claims
gt
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Metrology Analytical Methods and Tools
All analytical methods, tests, assays, and
analytical tools necessary to check the
realization of the invention should be
reproducibly described in the application
Decision T 1250/01  ... The lack of analytical
means for monitoring one single parameter of the
invention amounts to a lack of sufficiency of
disclosure of the invention.
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Clarity (of the claims)
..which is the most suitable claim form for a
nanotech invention.. ..to meet the requirement
of clarity without unreasonably reducing the
scope of protection?
the claims shall define the object of the
protection and shall be clear, concise and based
on the description.
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Aspects concerning Clarity
  PRODUCT-BY-PROCESS CLAIMS    FUNCTIONAL
CHARACTERIZATION     TERMINOLOGY 
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Product-by-Process.
An example  ..Nanocrystal metallic material
obtainable by a process comprising the step of
electrodepositing of the material on
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Interpretation of a Product-by-Process Claim

• A new process for preparing a known product is
  unable to restore the novelty of the obtained
  product .

exception when the process is able to confer a
novel feature Polymers extraction natural
substances combinatorial libreries
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T 0915/00, electrodeposition with a D.C.current
at pulse intervals ..Versus a D.C. current in
continuous. T 0753/02 deposition by sputtering
versus electrodeposition.T 0950/97 specific
surface topography by means of epitaxial growth.
The Board of Appeal of EPO  at nano-scale
level, it is difficult to prove that even minor
modifications in the process parameters are
neutral as regard to the structural features of
the obtained product..
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Functional Characterization
It is often easier and more reliable to describe
(and to monitor) the novel function caused by the
nano-size than to describe the structural
features of the nano-material causing the novel
function
Antireflective Titanium Nitride (TiN) film
capable of reducing the percent of reflected
radiation to less than 5 (T 0453/97) Chitin
nanocrystallites capable of inhibiting chitinase
activity
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The Terminology
In a pioneer multidisciplinary area the technical
meaning of the terms are not necessarily
standardized and equally recognized by the
experts of the different overlapping fields.
 Therefore each and every technical term used in
a claim should be properly explained in the
disclosure.
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Pioneer inventions and broad claims
On the point of broadness of the claims, and
accordingly broadness of the protection
conferred, nanotechnology may learn a lot from
the lesson of biotechnology
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THANK YOU FOR THE ATTENTION