IP Cases & Commentary – Details
01 August 2012
Avoiding The Pitfalls Of Patenting In An Emerging Technology - Graphene Related Inventions
A study by the UK Intellectual Property Office (UK IPO)1 has commented on recent trends in patent application filings relating to graphene. In particular, it notes that there has been a “rapid take-off of patenting related to graphene since 2000” and that a large proportion of the recent graphene-related patent applications have been filed by a relatively small proportion of applicants.
However, it seems that cheaper processes for producing graphene substrates are likely to be of great commercial interest and so it is reasonable to expect further research and thus patent applications to be focussed on this area.
Although the rewards for obtaining an early dominating right in an emerging technology sector can be high, the examination of patent applications related to emerging technology can expose risks with the patent. A review of examination reports of European patent applications having the word ‘graphene’ in the title shows such potential complications.
A number of objections have been raised by the EPO alleging a lack of sufficiency, ie, that the patent application, in combination with the common general knowledge, does not provide sufficient information for the claimed invention to be reproduced. In this regard, a number of examiners have noted the significant difficulties with producing graphene substrates, such as graphene ribbons, and pointed to commentaries in the art to support these difficulties.
During the emergence of a new field of technology, the common general knowledge may not be particularly well settled and may be open to debate. This is particularly the case for industries where research is being conducted at a furious pace and there are few standardised and well characterised production methods.
Therefore, applicants should ensure that their patent applications contain a robust and comprehensive explanation of how the invention is to be reproduced, and should not seek to rely solely on methods disclosed in a small number of previous publications which may be shown later to produce inconsistent results.
The EPO also appears to be particularly sensitive to the claim language used when examining subject matter from an emerging technology. In particular, it can be seen that a number of objections have been raised against misuse of the term ‘graphene’ in the sense that it has in some cases apparently not ruled out the presence of graphite or fullerene allotropes. This is perhaps because of an inconsistency between the description and the claims, or perhaps just because of a poor definition. Also, some Examiners have raised concern over the inconsistent use of the terms ‘graphane’ and ‘graphene’, and the unclear use of the term ‘functionalised’ in the context of ’functionalised graphene’.
Taking the use of the term ‘functionalised’ as an example, care should be taken to ensure that any method used to determine the type and extent of ‘functionalisation’ is clearly disclosed and not contradicted in the description, or by the common general knowledge. This is especially the case where the term is used to establish patentability. Where a term is essential to establish patentability, the EPO requires that it should be clearly defined and its parameters reliably determinable. If there are multiple methods for determining the ‘functionalisation’ which may provide different results, it is important to ensure that at least one way is described in the application in detail and that the invention is linked to this specific method.
Care should also be taken when discussing certain properties of graphene, such as conductivity. For example, in view of graphene’s potential to display ballistic conductivity, but not necessarily superconductivity, it is important to ensure that the properties of the material are defined correctly.
As mentioned above, cheaper fabrication processes for graphene are likely to represent a significant commercial goal for many. As a result, it may be that product-by-process claims form part of an overall strategy to protect such products.
However, it should be remembered that for a product-by-process claim to be validly used before the EPO, the product should be patentable (eg, novel and inventive) in its own right and there should not be another way of defining the invention. In this regard, it could be argued that there is not a commonly acknowledged ‘clear’ way of defining new graphene substrates and so it may be allowable to define the product with reference to its production method.
Establishing a dominating patent portfolio in an emerging technology requires a measured and balanced approach. In the case of graphene related inventions, issues relating to its methods of production, characterisation and physical properties have all been raised by the EPO. Although it seems that some of these issues could be resolved during examination, for others this may not be the case and the application may be refused. Also, as the commercial importance of graphene grows, it is these types of issues which could be exploited by opponents in order to seek revocation of the patent.