By Tina Dekker, Art Brion, and Dennis Haszko
Welcome to Part 4 of BRION RAFFOUL LLP’s Patent Spotlight! In this series, we have been highlighting new and interesting patents from various fields as inspiration to businesses and innovators. A patent’s value to a business is not always evident and is often misunderstood. By sharing recent patent stories across different fields, we hope to encourage businesses to consider patents as part of their intellectual property (IP) strategy. Today’s topic is nanotechnology.
Nanotechnology is a broad term used to describe devices or processes that involve matter at the nanometer (nm) scale. To put that size into perspective, 50 nm is approximately 1000 times smaller than the diameter of a human hair. Nanotechnology is found in a multitude of products and has many uses in many fields, ranging from smart phones and TV displays to medicine, materials design, surface coatings, and more.
Much of the research into nanotechnology happens in academic labs, but many technologies developed in university laboratories also have significant commercial value. If you are a researcher, consider whether your technology has any possible commercial value before disclosing it in any way—whether through journal publications, conferences, or simply a chat over coffee with a friend. Each of these scenarios is considered public disclosure from a legal standpoint. Even such small forms of public disclosure can prevent patenting in certain jurisdictions, such as Europe. Other jurisdictions, such as Canada and the United States, offer a one-year grace period in which to file a patent application for your invention after the first public disclosure.
Nanotechnology patents cover many different industry applications, such as nanomedicine and nanomaterials.
If there is anything we can learn from the present situation, as we await the development and distribution of an effective vaccine for COVID-19, it is that vaccine development is complicated. A recent patent** (US Patent No. 10,300,136) granted to the Massachusetts Institute of Technology (MIT) highlights a new method for vaccine production and administration. The method is ideal for use in remote or underdeveloped regions of the globe where routine vaccine administration is difficult and where low vaccination rates result in resurgences of otherwise preventable diseases, such as polio. The patent describes a method that uses 3D-printing to create a polymer-encapsulated vaccine, known as a “microsphere”. This microsphere vaccine formulation serves two purposes:
- It allows the vaccine to be administered orally; and
- After administration, the vaccine can be released into the body in an initial burst and then be released periodically over time (Figure 1).
Much academic research is directed to providing solutions to real problems, and these solutions often fit naturally into a commercialization context. Investing in IP protection, such as a patent, can capture and retain the value of inventive research that would otherwise be considered public domain after public disclosure.
Many nanomaterials feature unique optical properties. For example, the optical properties of quantum dots have been harnessed for use in commercial QLED TV displays.
The Vancouver-based company Nanotech Security Corp. has recently patented a security device that uses nanotechnology for banknote authentication. Of course, bank notes have many integrated security features. These features can be classified based on their required authentication process: Level 1 security features are visible to the naked eye and may be authenticated without machine assistance. However, Level 2 security features require an additional light source, such as ultraviolet (UV) light, to reveal the security feature. Traditional Level 2 banknote authentication uses UV light to expose a fluorescent image to the observer. While this technology for authenticating banknotes has been effective in the past, bad actors are finding ways to circumvent this authentication method. Nanotech Security’s patented device (US Patent No. 10,036,125) is a further step forward:th a multi-layer, luminescent security device that is printed onto bank notes using precise nanofabrication techniques.
This security device has two luminescent layers. At a normal viewing angle, only the fluorescent image from the second layer is visible, where the image is a portion of a complete image (as shown above, at left). When the bank note is tilted at a certain angle, fluorescence from the first layer becomes visible alongside the fluorescence of the second layer, and the two fluorescent layers together form a complete image (shown above at right).
How Can I Share My Research if I Cannot Disclose It?
A researcher’s natural inclination to be the first to publish or to present their scientific research may create problems when seeking patent protection. The solution is to present your research in a limited manner such that the average person in your field cannot reproduce your invention. So long as this condition is met, patent protection will very likely remain available to you.
Not sure where to start? Talk to the technology transfer office or the intellectual property office at your university, if such an office exists. Alternatively, consider booking a consultation with an intellectual property law firm. A patent professional can help you develop an effective intellectual property strategy so that you may publicize your research and achieve your research milestones without compromising your ability to protect your invention later.
Stay tuned for BRION RAFFOUL LLP’s Patent Preview Series Part 5: FinTech!
**Please note that US Patent No. 10,300,136 was published well before the COVID-19 outbreak. This article is not intended to suggest any application or use of this patent to COVID-19 vaccine research and should not be interpreted as such.