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Report on patenting nanotechnology in Russia
Due to the characteristic features of nanotechnology, the value of an individual patented invention may turn out to be quite high in the growing nanotechnology market sector. What are the risks of patenting in this technical field? Besides the economy, also the number of nanotechnology patents is growing at a fast pace in Russia. What is the value of a nanotechnology patent on the Russian market? What kinds of measures have been adopted in Russia to promote the growing market field of nanotechnology?
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Patenting of Nanotechnology – the Russian Landscape. Dr. Teemu Lang, Dr. Dmitri Popov. Papula-Nevinpat, October 2008, Helsinki, Finland.
Summary and Conclusions
Nanotechnology as an emerging new field of technology poses many challenges to people involved in protecting nanotechnology-related inventions by patents. The cross disciplinary nature of the field further adds to these challenges. For example, the definition of nanotechnology is constantly evolving and various jurisdictions and officials use definitions of their own which makes classification of nanotechnological applications difficult. While the global market for nanotechnological products is still relatively small, consumer products incorporating nanotechnology are beginning to emerge. It may therefore be assumed that the true scope and value of nanotechnological patents are gradually being tested. Indeed the enforcement of patents in this field will build more case law and shape the conventions for interpreting the language used in the patent applications. Important topics will be e.g. the interpretation of the product-by-process formulation in claims and the value of experimental data in demonstrating the technical effect of the invention.
The value of patents will undoubtedly be specifically high in the field of nanotechnology not only due to the potentially enormous global markets in this sector but also due the fact that patents in this field, especially in the nanomaterials and nanodevices category, will relate to very small structural entities which can be used in a wide variety of end products. The high potential value of nanotechnological patents generates the risk of overpatenting which may result in patent thickets and complicated licensing arrangements.
Concerning the Russian landscape of patenting of nanotechnology, risks related to the market development make it more difficult to evaluate the significance and value of nanotechnology patents in Russia. The relatively immature IPR legislation and the unavailability of qualified IP professionals further add to the uncertainties related to predicting the outcome of patent prosecution and litigation processes. Also case law is scarcely available to help interpreting the language in nanotechnological patent applications in Russia. These aforementioned reasons together with the country’s political and economic history have resulted in the fact that patenting activity in the field of nanotechnology has been very low to date.
Although there is not much case law available to evaluate different approaches to drafting a Russian patent application for a nanotechnological invention, it may be argued that specific emphasis should be put on disclosing improvements of the invention with respect to prior art, preferably using experimental data. A recommended formulation for claims is the “process/method for obtaining a product/apparatus”-formulation, which may be more easily drafted for a nanotechnological invention as opposed to a pure product claim. Furthermore this formulation may also bring some protection to the product and may more easily bring out the inventive features of the nanoscale invention.
In 2006 the Russian government announced their intention to start supporting the development of nanotechnologies by over one billion euro annually during the period of 2007-2009 through the state corporation called “RosNanoTech”. Already the effects of this decision can be observed in the total number of nanotechnological patent applications filed in Russia. Taking into account the heavy involvement of publicly funded institutions in the development of nanotechnologies, and comparing the amount of public funding for nanotechnology in the US and Russia, a significant increase in the number of filings of nanotechnology related patent applications in Russia can be expected during the upcoming few years. Statistics already indicate that the number of patent publications related to nanotechnology will reach an all-time high in Russia during the year 2008, which indicates that the related rate of application filings has been picking up speed since the year 2006.
Of the individual subfields of nanotechnology, materials and surface science, and sensing account for the majority of patent applications from domestic applicants in Russia. This is expected considering the traditions that the country has in this area e.g. around semiconductor development and optics. At the other end, the domestic activity around nanobiotechnology in Russia is insignificant. In light of the presented statistics and considering the existing R&D infrastructure in Russia, it is noted that patenting activity related to materials and surface science, and sensing is likely to benefit the most from the strong federal support, and privately owned high-tech companies in the corresponding market areas are already being established. Therefore, also western companies should keep their eyes open for developments in Russia around these sectors of nanotechnology, if not to compete in the small, although increasing, Russian market but to license rights to potentially valuable inventions.