Nanotechnology and Patenting in Hong Kong
Nanotechnology refers to a multidisciplinary field of applied science and technology
whose unifying theme is the control of functional systems at the atomic and molecular
scale, and the fabrication of devices within the size range. It concerns specific patent
issues.
This report is prepared based on the various points raised in last year’s issues paper with
updates.
1. Guidelines for the examination of nanotechnology patent applications
There are two types of patents in Hong Kong, namely standard patents and short-term
patents. Original filings for standard patents are not available and they are obtained
by first filing patent applications in either the UK Patent Office, European Patent
Office (designating the UK) or the Chinese Patent Office (“the Based Office”).
Examinations are conducted in the Based Office and standard patents will be granted
in Hong Kong after grant of the patent in the Based Office after completion of certain
steps.
For short-term patents, original filing can be made in Hong Kong but they are not
subject to substantive examination. Only formality examination is conducted.
As substantial examination is not conducted by the Hong Kong Patents Registry on
standard and short-term patents, no guidelines for substantive examination have been
issued by the Patents Registry of Hong Kong.
2. Nanotechnology patent examination group
Due to the peculiar patent system in Hong Kong, nanotechnology patent examination
group is not necessary.
3. Nanotechnology training for examiners
Since examiners are required to conduct formality examination only, nanotechnology
training for examiners is not necessary.
4. Trends in number of nanotechnology patents
When we conducted online search for "%nano%" for nanotechnology-related patents,
205 were found to have been applied for or granted in Hong Kong. Hong Kong has a
fair contribution to the research and development of nanotechnology by establishing
research centres at many universities. An international conference on nanotechnology
and advanced materials is also held every year in Hong Kong Convention and
Exhibition Centre.
Further, nanotechnology applications have been gaining grounds in Hong Kong
industries. Industry representatives have very strong and focused interest in how
nanotechnology can be applied to their related industry. In particular, coating
technologies, composite materials and textiles are very popular areas for
nanotechnology applications.
5. Nanotechnology issues before patent office or the courts
The patentability of a Nano Energy Cup has arisen as a side issue before the Court of
First Instance in Nano World (HK) Ltd v. Nano Biotechnology Holdings Ltd HCA
2797/2004. The court, without determining the issue, merely stated that there must be
a serious issue to be tried as to the patentability and so continued injunction.
6. Whether size alone creates a new unknown property or invention and whether
patentable
While a product with unprecedented size may satisfy the novelty requirement as not
forming part of the state of the art, it may fall foul of the inventive step requirement if
it is obvious to a person skilled in the art (section 96, Patents Ordinance). In Canon v.
GCC [1995] AIPR 124, Rogers J adopted the conventional approach in PLG
Research Ltd v. Ardon International Ltd [1993] FSR 197 and determined the meaning
of "obvious" as "so obvious that it would at once occur to anyone acquainted with the
subject, and desirous of accomplishing the end".
7. Whether tools involved in making nano products and the use of nano product are
patentable if the manufacturing process is patentable
As long as the tools for making the nano products and the uses of the nano products
satisfy the novelty and inventive step requirements, they can be patentable.
8. Whether reverse doctrine of equivalents is applicable in nanotechnology
The reverse doctrine of equivalents, as formulated in Graver Tank & Mfg v. Linde
Air Prods Co (1950) 339 US 605, means that "where a device is so far changed in
principle from a patented article that it performs the same or similar function in a
substantially different way, but nevertheless falls within the literal words of the claim,
the doctrine of equivalents may be used [in reverse] to restrict the claim and defeat
the patentee's action for infringement".
The courts in Hong Kong have never considered the reverse doctrine of equivalents.
In case an issue on the reverse doctrine of equivalents arises, it can be anticipated that
Hong Kong courts will refer to common law principles as formulated by
commonwealth countries, most notably the UK.
The UK recognizes the doctrine of equivalents. The UK tends toward fairly narrow
interpretations of infringement claims and insists on the presence of each essential
feature of the claimed invention in the accused device. It could be argued that the
reverse doctrine of equivalents also applies.
9. Views about patentability of nanotechnology
Merely reducing the size of the products may not be patentable if it is obvious to the
person skilled in the art. Inherency problem may also arise if the nano product also
exists in the composition. As long as the above hurdles are galloped through, the
invention should be patentable.
10. Nanotechnology development in Hong Kong
Funds were contributed by both The Hong Kong Government and the local industries
to establish two nano technology centers in Hong Kong, namely, Nano Technology
Center for Functional and Intelligent Textile and Apparel at the Hong Kong
Polytechnic University and the Nano and Advanced Materials Center at the Hong
Kong University of Science and Technology.
Mission of the Nano Technology Center for Functional and Intelligent Textile and
Apparel includes:Providing research and development infrastructure for textiles and apparel related
nanotechnology;
(i)
Developing new nanotechnology and products for functional and
intelligent textile materials and apparel;
(ii)
Facilitating technology transfer to and collaboration with the industry;
and
(iii)
Providing training to postgraduate students and company technical
personnel.
The Center focuses on nano-structured surface polymerization system; system for
precise manufacture of nano-particles; patterned electrical textile and devices and
nano-structure for photonic fibers and fabrics.
The Nano and Advanced Materials Center was incorporated as a non profit making
company in Hong Kong under the name Nano and Advanced Materials Institute
Limited. Its mission is to:(i)
develop core competences in nanotechnology and advanced materials
to offer a powerful technology platform that could lead to a wide
spectrum of innovative products;
(ii)
act as the focal point for conducting market-driven, demand-led
research and development aimed at the technology upgrading of
regional enterprises; and
(iii)
train human resources in nanotechnology and advanced materials for
the present and future needs of Hong Kong and the Pearl River Delta
region.
The Center focuses on five core technology areas, namely nanomaterials:
functionalisation and applications; nanotechnology enabled nano opto-electronics;
nano-structured/textured material applications; advanced materials for
interconnection, packaging and thermal management; and forming of advanced
materials.