Nanotechnology and Patenting in Hong Kong

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”). Examinationsare 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.

1. Nanotechnology patent examination group

Due to the peculiar patent system in Hong Kong, nanotechnology patent examination group is not necessary.

1. Nanotechnology training for examiners

Since examiners are required to conduct formality examination only, nanotechnology training for examiners is not necessary.

1. 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.

1. 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.

1. 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".

1. 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.

1. 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.

1. 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, NanoTechnologyCenter for Functional and Intelligent Textile and Apparel at the Hong KongPolytechnicUniversity and the Nano and AdvancedMaterialsCenter at the Hong Kong University of Science and Technology.

Mission of the NanoTechnologyCenter 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-structuredsurfacepolymerization system; system for precise manufacture of nano-particles; patterned electrical textile and devices and nano-structure for photonic fibers and fabrics.

The Nano and AdvancedMaterialsCenter 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.