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Patenting nanotechnology inventions – An Indian milieu


The current Indian patent regime fulfils nearly all the requirements of the TRIPS mandate as well as the Patent Cooperation Treaty, 1970. As newer technologies emerge, Science throws challenges after challenges in the path of law. Protection of some of these technologies has grey areas in Indian Patent system. One such technology is “nanotechnology”. Nanotechnology delas with manipulation of nano-metre scale materials. Nanomaterials being building blocks, can be manipulated to create complex materials and devices by regulating shape and size at the “nanoscale”. The broad term “nanotechnology” encapsulates any scientific area or a combination of areas of biology, physics or chemistry, that deals with the manipulation of materials at nanoscale. The significance of nanotechnology is that materials reduced to the nanoscale show very different properties compared to what they show on a macroscale.

Issues faced by Indian’s patent regime:

One of the major concerns with the nanotechnology inventions is it being multi-disciplinary in nature. Such a multi-disciplinary nature of nanotechnology inventions poses challenges for both the patent offices and courts in determining the patentability of nanotechnology inventions. They are faced with the issues of determining which context is appropriate across many disciplines and industries and include all of them in decision making. Additionally, a potential patentee as well as patent office are required to search for prior art not limited to one field but in wide variety of fields.

Another major concern with the multi-disciplinary nature of the nanotechnology inventions is that the corresponding patents bear overly broad claims. In scenario like this, the patentee tries to maximize the profit by preferring patent claims which could cover as many applications and potential markets as possible. Due to presence of high number of such patents with broad and overlapping claims, possibility of fragmentation of patent landscape and patent thickets arises. The broad definition of nanotechnology creates difficulties for both the inventor and the patent examiner in classifying new inventions for patent office purposes. For instance, a patent application may use broad terms, such as “microscale” or “quantum dot” to describe a nanotechnology invention or may use terms like “nano-second”, thereby covering multiple fields. Lack of a standardized terminology for nanotechnology leads to patent overlapping and broad claiming, and due to which both the inventor and the examiner are required to take considerable caution in order to search for prior art in the area, since “nano” alone is not adequate term to search. 

According to the Article 27(1) of TRIPS, a valid and enforceable patent can only be obtained on a certain invention if the claims are novel, non-obvious over the prior art and have industrial usage. However, patenting of nanotechnological inventions is not same as that of other technologies and how to contemplate a certain “invention” differs from country to country. In India, under section 2(1)(j) of the Patent Act, 2005, defines an “inventive step” as a feature of an invention that includes “technical advancement” as compared to the existing knowledge that makes the invention non-obvious to person skilled in the art. These provisions were later made stringent by post amendment in 2005, inclusion of Section 3(b) and 3(d) has posed challenges for new technologies in India. Section 3(b) of Indian patent act forms a barrier to nanobiotechnology based patenting due to assumptions about nanotoxicity caused by nanoparticles. Nano biotech inventions causes environmental damage and due to high permeation ability of the nanoparticles further the nanoparticles may get into the bodies of the humans and may result in nanotoxicity. In addition, according to section 3(d), there is vagueness in particle size to be considered patentable subject matter or not. The word “nano” covers inventions of 100nm in size or smaller. In many cases, the nano material may be combination of many particles or technologies or nano particle of an existing material, without substantial difference in character and industrial application. The invention may not pass the “standard efficacy” requirement demanded by Section 3(d). There is a lack of standard for determination of the efficacy and qualification of enhancement of efficacy in India. However, Section 3(d) could be important means to prevent frivolous grant of patents.


At present, Indian Patent Act has no provision, and no guidelines or regulations has been framed with respect to regulating this technology through TRIPS agreement which in fact encourages protection of intellectual property across all fields of science. This gap between the technology and the patenting of the technology could be attributed to the lack of awareness about the traits and understanding of the technology.

One of the possible solutions to the problem of patenting nanotechnology inventions can be addressed by bringing amendments in the Indian Patent Act.  The lawmakers must devise a mechanism to recognize the field of nanotechnology and formulate a comprehensive plan that deals with nanotechnology and patenting of nanotechnology inventions. Since, nanotechnology covers multiple scientific fields, setting up multiple inspections by a team of examiners from different fields instead of a single examiner would aid in better understanding of the claims. Further, a separate database similar to that of traditional knowledge database could be created for nanotechnology. A policy decision is needed for a separate classification for nanotechnology patents. These preliminary steps would surely encourage the research and innovation in the field of nanotechnology which in turn would render prosperity to Indian patenting system.

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How can I find out whether my invention is patentable?

In order for a proposed invention to be awarded a patent, it has to pass the following five tollgates:
  • Patentable subject matter
  • Novelty
  • Non-obviousness/inventive-step
  • Industrial application
  • Enablement 
Patentable subject matter
The proposed invention which seeks a patent should fall outside the scope of “non-patentable subject matter”. Almost every country provides a list of subject matter, which cannot be patented.
In India, section 3 and 4 of Indian Patent Act (Law governing patent system in India) , discloses such non-patentable subject matters. For example, in India, non-patentable subject matter include, laws of nature or anything opposing them, physical phenomenon, abstract ideas, discovery of any living thing or non living substance, method of agriculture or horticulture, new form of know substances, method of playing games, any aesthetic creations, anything that causes a serious harm to human, animal, plant life or to the environment, among others.
Once a proposed invention passes this tollgate, the patent office will look into the novelty aspect.
The proposed invention will be announced as novel, if it has not been anticipated by information available in public domain prior to the priority date (first filling date) of a patent application for the proposed invention. Proposed invention passing this tollgate will be further scrutinized to check compliance with non-obviousness requirement of patentability.
The invention can pass the non-obviousness tollgate, if it has technical advancement with respect to know prior art (existing public knowledge). This technical advancement should not seem obvious to a person skilled in the field of the proposed invention, in light of prior art. Most of the proposed inventions find it difficult to pass this tollgate, as the interpretation of law governing this requirement is subjective in nature.
Industrial application
The next tollgate in obtaining a patent is industrial application. Industrial application according to the Indian Patent Act means, the proposed invention should be capable of being made or used in the industry. Most proposed inventions satisfy this requirement, unless the proposed invention is frivolous in nature.
Enablement requirement can be met as long as the inventors have sufficient information to reduce the proposed invention to practice. Information that enables the proposed invention to be reduced to practice should be included in the patent application corresponding to the proposed invention. The Indian Patent Act requires the patent application to include information that enables a person with ordinary skill to practice the invention. The Patent Act also requires the patent applicants to disclose the best approach of practicing the invention, which is known to them at the time of filing the application.
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