Quantum Technologies – A Patent Perspective

January 2021

Quantum Technologies – A Patent Perspective

In recent years the rapid advance of technology has paved the way for a number of new practical devices and methodologies based on quantum mechanics. These new applications are often collectively referred to as quantum technologies. This nascent field often involves technologically complex inventions meaning that special attention must be paid when drafting patent applications aimed at protecting these technologies to ensure the strict criteria applied by the various patent offices around the world are met. In this article we look at some key pointers that should be borne in mind for patent specifications relating to these technologies.

1. The invention must not be excluded from patent eligibility.

In most countries around the world patent protection cannot be obtained for discoveries and scientific theories. As such, any new discovery or scientific theory is unlikely to be the subject of a valid patent. For example, a new quantum mechanical theory which describes how a specific quantum mechanical process works would likely be deemed to be excluded from patentability by a patent examiner (even if the new theory was to revolutionise that particular field!).

Additionally, mathematical methods and computer programs are often not eligible for patent protection according to the patent legislation of many countries. These exclusions have the potential to be applicable to many new inventions in the field of quantum technologies. For example, these exclusions may preclude patent protection from being obtained for new protocols and computational methods for processing the information content of qubits. That being said, whilst it is difficult to obtain patent protection for the method or program itself, the specific practical application of that method/program may well fall outside of the exclusions from patentability if the patent application is drafted appropriately. This is especially the case if the practical implementation of the method/program produces a previously unknown beneficial technical effect.

Patent applications can be specifically drafted to help avoid these exclusions from patent eligibility but it is extremely important that the application be drafted in this way from the outset as correcting any inadequacies may be impossible once an application has been filed. In the most severe cases, these inadequacies could result in all rights in the invention being irrecoverably lost.

2. The invention must be described in sufficient detail.

Another key factor that needs to be considered when drafting any patent application is the need to describe the invention in enough detail so that a person who is an expert in the appropriate technological field is able to perform the invention if they wish. This may mean that they are able to build a particular piece of equipment or that they are able to perform a specific method based on the details given in the patent application. This criterion is applied by almost all patent offices around the world.

As quantum mechanical devices and methods are often complex both in their design and in their method of operation, special attention needs to be paid to this requirement when drafting patent specifications. This is because patent offices often apply the criteria for sufficiency of disclosure much more strictly for complex inventions. For example, they might assume that the technical expert would need much more information in order to carry out a quantum technology-based invention relative to a simple mechanical device utilising only classical physics. Therefore, when drafting such patent specifications, it is best practice to include a full mathematical description of any quantum mechanical process (where appropriate) along with full and precise details about each individual component of the quantum system needed to provide the effect that the invention achieves.

Failure to fulfil this requirement upon filing the application could prevent patent applicants from obtaining valid patent protection for their inventions and in a worst-case scenario could see applicants irretrievably losing all rights in their inventions. This is because in most jurisdictions, new details cannot be added to the patent application to rectify the lack of explanation on how to implement the invention. As such, it is crucial that a patent application is prepared and filed with all the necessary technical details needed for an expert in the field to be able to carry out the invention at the outset.

3. The words used in the claims must be appropriate.

Any patent specification must include at least one clause referred to as a ‘claim’. Each claim is effectively a statement of what an inventor believes they have invented. The choice of words used in these claims is critical as it is ultimately those words which decide the scope of protection afforded to the patent applicant. Choosing sub-optimal words could therefore have serious detrimental effects for the applicant as they may then only be able to obtain a much narrower scope of protection than was originally envisaged. This choice of wording is also something that is extremely difficult to correct once the application has been filed. It is therefore crucial that from the outset claims be prepared in a way which is commensurate with the scope of protection that should be afforded to the applicant based on their inventive insights.

At the same time, the claims must also be clear enough to define the protection which is sought by the applicant. Patent offices around the world apply different criteria relating to the clarity of claims. When it comes to claims for quantum technologies, there are many words that might be used by experts in the field to refer to specific devices or activities. However, it is important to remember that these words will be placed under close scrutiny by a patent examiner during examination of any patent application. Terms like ‘quantum dot’, ‘quantum protocol’ and ‘quantum communication’ may be common terms in the art but may nevertheless be subject to clarity objections by patent examiners. For example, one could imagine a patent examiner arguing that it is not clear what sizes are covered by the term ‘quantum dot’ (as the size range can vary depending on material) or that it is not clear whether the term ‘quantum communication’ involves the use of only quantum signals or involves the use of both quantum and classical signals. Indeed, the word ‘quantum’ itself might not always be appropriate to include in the claims of a patent specification even if the invention relates to a quantum technological invention.

It is therefore important to draft the claims of a patent specification in terms of the technical features of the quantum technological invention as far as possible. Failure to do so may mean that the patent application will have to be amended during examination which may result in the scope of protection being unduly limited.

4. It might be possible to protect a new use of a known device.

Most patent offices around the world allow new methods to be the subject of a valid patent if that method satisfies certain criteria (i.e. the method must be new and non-obvious). This is sometimes also the case even where the method is reliant on using apparatus that is previously well known in the field. For example, a specific type of quantum device (e.g. a resonant tunnelling diode) may be known (and subject to patent protection itself) but if that device is used during the operation of a method which has not previously been realised, then patent protection may be separately obtainable for the method. This is a significant point as there are many quantum technological fields where an invention may reside in the development of a new protocol implemented on otherwise known devices. Thus, given the above, and if drafted appropriately, patent applicants may still be able to obtain patent protection for these new methods even though the underlying quantum mechanical device is well known.

We hope this article offers a useful insight for patent applicants operating in the field of quantum technologies. If you would like any further information or assistance regarding drafting and prosecution of patent applications relating to quantum technologies, please contact us at docketing@secerna.co.uk.

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