Patently obvious: Intellectual property rights and nanotechnology

Abstract

Rapid technological advances and commercialisation of the emerging field of nanotechnology will challenge traditional international and domestic regulatory regimes, including intellectual property rights. This article examines the role of the World Trade Organisation's Trade-Related Intellectual Property Rights Agreement as a global regulatory device for nanotechnology, and questions the applicability of the Agreement with respect to current and future nanotechnology applications. With the commercialisation of nanotechnology already occurring, exploration of the international intellectual property and nanotechnology interface is timely. Early recognition of uncertainties will enable policy makers the ability to balance the needs of commercial investors and innovation against the broader objectives and ideals promised by nanotechnology.

Introduction

Nanotechnology, a form of molecular engineering, has been heralded as the ‘new technological revolution’ [1]. This cutting edge technology is enabling industry to manipulate matter at the atomic level, thereby offering unrivalled possibilities across the fields of, for example, biotechnology, information technology, agriculture, medicine, and materials [2]. The Action Group on Erosion, Technology and Concentration (Etc Group) [3] note that future applications of nanotechnology will provide scientists the ability to ‘modify matter and transform every aspect of work and life.’

Despite its emergent nature, the commercial impact of nanotechnology is already being felt. While estimates vary considerably, BCC research for instance suggest that the global market value for nanotechnology-related products was approximately $US10.5 billion in 2006 [4]. Spectacular growth in the market has been forecast over the next 5–10 years, with commentators suggesting that by 2015 the potential size of this market will lie somewhere between $US1 trillion [5] and $US2.4 trillion [6].

The economic implication of nanotechnology has ensured that research and development (R&D) has become a national priority for the industrialised world. Today over 60 countries, including the United States (US), Japan, Germany, Taiwan, China, Israel and Australia, have implemented national nanotechnology initiatives [7], [8], with public sector funding estimated at $US4.6 billion in 2004 alone [6]. Government spending has similarly been matched by private sector investment, with companies such as IBM, NEC, Monsanto and DuPont all racing to share in the profits of next generation scientific developments [3], [9].

Despite the attention focused on the scientific and commercial potential of nanotechnology, until recently there has been limited debate on the broader legal, regulatory and ethical aspects of nanotechnology [10], [11], [12], [13], [14], [15]. While many of the patent law and broader intellectual property rights (IPRs) issues raised by nanotechnology at this time are not unique, the current international intellectual property framework, as governed primarily by the World Trade Organisation's (WTO) Trade-Related Intellectual Property Rights (TRIPS) Agreement, was realised at a time when nanotechnology was simply a futuristic aspiration.

This paper investigates the regulation of nanotechnology within the context of the current IPRs regime, as governed by the TRIPS Agreement. Following an examination of the phenomena of nanotechnology, this paper explores whether nanotechnology falls within the auspices of Article 27 of the TRIPS Agreement. In doing so, the paper questions the applicability of Article 27 as a regulatory device for nanotechnology, particularly in light of the apparent blurring of the discovery/invention interface. The technicalities of this debate are critical to the scope of IPRs that may be afforded to commercialisation of nanotechnology products. In reviewing this issue, this paper explores the growth in nano-patents and discusses the implications of the US PTO Class 977/Dig 1 with respect to the global harmonisation of nano-related nomenclature. Finally, this paper will argue that the lack of uniform definitions underpinning the granting of IPRs gives rise to the potential for overlapping and conflicting patents claims, and suggests that governments adopt a proactive approach to protect the commercial interests of patent holders.