Intellectual Property & Technology

Think Small—Really Small

Nanotechnology is the science of creating and manipulating very small things. The term comes from the word nanometer, one billionth of a meter. To understand just how small a nanometer is, consider that there are over 25 million nanometers in one inch. Although the size of nanotech devices may be small, the nanotechnology industry is anything but. The impact of nanotechnology can be astronomical, and the ability to obtain patents in this arena is central to the magnitude of that impact.

Patents are employed to protect and thereby enable investments in nanotechnology. Of course, simply making something smaller does not entitle one to a patent. Generally speaking, patents are awarded for inventions that are useful, novel, and not obvious. Simply shrinking the size of a device is usually considered an obvious variation and therefore not patentable, unless there is a good argument to the contrary. For example, if there were a barrier to shrinking the size or an unexpected result was achieved by the size reduction, then the invention may be considered “not obvious” and possibly patentable.

However, even if a miniature version of a larger device is not patentable, the method of manufacturing that device may be patentable if the method is useful, novel, and not obvious. Many of the well-publicized early developments in nanotechnology were miniature versions of larger devices, such as gears and pumps. While gears have been around for a long time, gears on a nanotechnology scale were quite novel. The techniques used to make those gears were nothing like the techniques employed by foundries and machine shops to make conventionally sized gears. Consequently, although the nanotech-sized gear may have had unpatentable features, the methods used to make that tiny gear were certainly new and by conventional standards not obvious.

The same logic works in reverse. That is, increasing the size of something does not generally lead to a patentable device, unless there is some reason that a size increase was not obvious to one having ordinary skill in the art.

However, the methods used to make such a super-sized device may themselves be nonobvious and therefore may be patentable. Hence, although a change in size may not lead to a patent, it may be possible to obtain a patent on the associated method and thereby keep competitors at bay.

R. Kent Roberts, a partner in the Firm’s Intellectual Property & Technology Practice Group, concentrates his practice in intellectual property matters related to patents, trademarks, and copyrights. He is admitted to practice in Connecticut (1994) and New York (2000), and he is registered to practice before the U.S. Patent Office. He is not admitted to practice in Florida. Mr. Roberts may be reached at kroberts@hodgsonruss.com.