Cleantech & Nano Blog

Timely insight on emerging legal and business development

Patent Reform Moving Ahead – Debates Continue, PTO Rules Emerging,… Price Outrage?

Posted by J. Steven Rutt on Posted in Cleantech; Patent; U.S. Patent Reform

Two items of note today:

1) The US PTO today finally issued its proposed rules to implement its novel procedure called supplemental examination.  Bad news; and maybe outrage to follow.  They will charge a PTO fee of $5,180.00 “for processing and treating a request for supplemental examination.”  They will also charge a whopping fee of $16,120.00 “for ex parte reexamination ordered as a result of a supplemental examination proceeding.” !

Even more, to file a request for reexamination will cost $17,750.00 in PTO fees.

The public has two months to comment (to express their outrage?).

2) Also, I participated in a panel at American University today on patent reform and post-grant review processes.  I tried to express the need, conveyed by clients, that the complexities of the patent system need to be held in check, particularly for small business innovators.  Now it also appears that costs also appear to be in need of holding in check in the new US PTO.  One can only guess the PTO fees for things like inter partes review or post-grant review.  Numbers like $40,000 were noted on rumor-like basis.

The humor was along the lines of one can buy a nice car with these fees!?

PTO Procedures Under The America Invents Act, March 26, 2012

Posted by Matthew A. Smith on Posted in U.S. Patent Reform

Cleantech & Nano Blog is a proud sponsor of ACI’s “A Practical and Tactical Guide for Maneuvering New and Amended Procedures and Mastering the Intricacies of PTO Practice in the Wake of Patent Reform” forum to be held on March 26 and 27, 2012 in New York City.

Information provided by ACI:

The America Invents Act (AIA) is one of the most sweeping and iconoclastic pieces of legislation in more than half a century. Not only did the AIA reform the basic tenants of the American patent system, but it also lead to the evolution of PTO procedures. Under the AIA’s auspices, some procedures have been amended and others newly created. The AIA has, in essence, created a new type of litigation before the PTO- or more specifically, the Patent Trial and Appeals Board (PTAB) which it also put into being. Patent attorneys representing a variety of industries from nanotechnology – to medical devices – to financial services – to tech and consumer products are now pondering these new and amended procedures and how they will impact current and future strategies.

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Innovation, Basic Research, Clean Energy – Obama’s State of the Union Vision

Posted by J. Steven Rutt on Posted in Cleantech; Patent

President Obama delivered his state of the union address tonight. He hit many points of interest to those of us monitoring the high tech ecosystems: innovation, start-ups, basic research, federally-financed labs, universities, clean energy, etc. etc.

Killing cancer cells but leave healthy ones, he said. Sounds like nanotech.

Lightweight vests for cops and soldiers that can stop any bullet, he said. Sounds like advanced materials and/or nanotech.

Curious it was to hear him say that public research dollars were used to develop the technologies to extract natural gas from shale rock. Really? Not sure about that one. We can research more but am dubious from patent literature surveys.

Finally, do not forget his high tech batteries – more nanotech.

Also, the OSTP webpage on the State of Union speech noted more about Dr. Hiroyuki Fujita’s achievements with high tech companies QED and eQED.

The patent system apparently was not stated – a disappointment. Patent system’s regulations in view of reform are increasing heavily these days, which is at odds with his concept to cut regulation. 

Nevertheless, the vision is a good one for cleantech and nanotech.  Time to make it happen; cut through it time. Vision not enough.

DOE Features Ames’ Lead-Free Solder Patent and License Income

Posted by J. Steven Rutt on Posted in Cleantech; Patent

The Department of Energy (DOE) recently featured lead-free solder innovation and licensing from the Ames National Laboratory and Iowa State University. Apparently, $39M of licensing income has been received to date, which makes it now the highest royalty producing patent(s) at Ames. The lead-free compositions are based on tin, silver, and copper mixtures (alloys). 

Preventing the introduction of lead into the environment is an important, classic example of cleantech. I can remember in the 1990′s working on patent technologies for lead-free bullets and lead-free paint. A brief search of granted U.S. patents shows 577 granted patents have “lead-free” in the claim and, even more, 838 granted patents have “lead-free” in the claims. Lead-free technology is a leading example of how environmental concerns can drive innovation. For example, some of the lead-free solders apparently have advantages over the lead-containing solders. Some additional, commercally important lessons from this cleantech story:

  • government regulation, particularly in the European Union in 2006, apparently was a leading factor in increasing the license income;
  • time – roughly a decade – was needed before the licensing income started increasing and maturing;
  • the inventions apparently flowed from basic research efforts;
  • U.S. patents with Ames inventor Iver Anderson related to this technology include US Patent Nos. 5,527,628 and 6,231,691. These patents used the important claim strategy for materials technology, use of “consisting essentially of”;
  • several recent 977 nanotech patent publications show nanoparticle aspects of the technology (see, for example, US Patent Publication 2010/0031848 to Samsung);
  • even though foreign filing apparently was not carried out, licensed from companies outside the U.S. apparently were forthcoming

Cleantech Energy Patent Landscape Report Released

Posted by John M. Lazarus on Posted in Cleantech; Invest; Licensing

Foley’s annual Cleantech Energy Patent Landscape Report provides an analysis of the top clean energy technologies patented in the United States to aid industry executives, start-ups, individual inventors, and investors in identifying trends and market opportunities in this continually changing landscape.

View the executive summary: 

2011 Cleantech Energy Patent Landscape Report Executive Summary 

The Report highlights key findings from a review of more than 1,100 granted U.S. patents specific to clean energy production, efficiency, and conservation technologies within eleven focal categories: solar, wind, hydro, geothermal, biomass, nuclear, hybrid vehicles, fuel cells for vehicles, utility metering, smart grid technologies, and CO2 storage or sequestration. To help participants in this space discern realistic opportunities for sustaining competitive edge and revenue generation, the analysis offers insight on:

  • Regional cleantech activity
  • Year-to-year trend perspective
  • Specific technologies for which patent protection is being granted and who is obtaining those patents 
  • Focal points for venture capital investments 
  • Areas of patentable white space 
  • Potential licensing availability for corporate entities

For more information or a copy of the full annual report, please contact your local Foley attorney or contact me directly at jlazarus@foley.com.

Diamond, One Important Arrow in the 2012 Advanced Materials Arsenal, Patent Efforts Increasing

Posted by J. Steven Rutt on Posted in Cleantech; Nano Biotechnology; Patent; Water

One subject to watch in 2012 is diamond. Synthetic diamond is one important arrow in the arsenal of advanced materials and is an essential part of the carbon based nanomaterials scene including familiar materials in the press such as fullerenes, carbon nanotubes, and graphene. Synthetic diamond films and powders, however, are also an important part of nanotechnology 2012, as it can have grain sizes at the nanoscale. Indeed, class 977 nanotech patent efforts on diamond seems to be increasing. In 2011, a record number of class 977 patent applications – 28 – included diamond in the title or abstract. In 2010, that number was only 18 and the year before was only 11. Some important diamond applications lead to energy savings and better electrodes, so it is also an important material for energy and cleantech. Biosensor applications also exist.

An excellent historical treatment of the development of synthetic diamond technology is Robert M. Hazen’s book, The Diamond Makers, 1999. A major player in the field was General Electric, which continues to this day to be a leading force in advanced materials, nanotech, and cleantech.

In the conception of manufacturing at an atomic, molecular, or nanoscale, inventors and futurists have always thought of building the perfect material: diamond.

Nanomanufacturing in 2012, Including Carbon Nanotubes in New Hampshire

Posted by J. Steven Rutt on Posted in General

The magazine, Technology Review, provided a colorful, short feature on a leading nanomanufacturing company, Nanocomp Technologies in its last issue (pages 80-83 for the print version). In the U.S. presidential election year of 2012, manufacturing will be a leading theme for economic policy debate, and high tech and intellectual property aspects of manufacturing will be a particular focal point for U.S. concerns. Ironically, Nanocomp Technologies is located in New Hampshire, site of the primary this week. Nanocomp makes carbon nanotube (CNT) yarns, sheets, and related products. The materials’ weight savings have energy efficiency implications.

In looking at the Nanocomp webpage, I noted a number of their prior press releases explaining receipt of SBIR funding, confirming the important role SBIR funding can play for nanotechnology and cleantech. For example, a March 24, 2008 press release announced a DOD SBIR. Their most recent press release, November 16, 2011, notes they were selected by the DOD for a program which would include creating a path toward commercialization for civilian industrial use, as well as supply to the DOD and NASA. On SBIR updates, Congress recently passed legislation renewing the SBIR program for which Foley has provided expert commentary.

We noted the carbon nanotube industry in our October 22, 2011 blog includng reference to a recent review of the industry and the leading CNT producers.  2012 should prove to be an important year for the growth of nanomanufacturing, both in a bulk volume aspect and also in a more refined, strategic aspect.

Nanotech Regulatory Update: Will 2012 be the Year of Nano Regulations?

Posted by Sarah A. Slack on Posted in Nanotech Regulation

EPA and FDA both started 2012 by receiving criticism for their lack of management of nanomaterials in products the agencies regulate. EPA’s inspector general published a report released on December 29, 2011, entitled EPA Needs to Manage Nanomaterial Risks More Effectively in which the inspector general strongly criticizes the effectiveness of EPA’s management of nanomaterials. The report notes EPA’s failure to have in place a formal process to coordinate the distribution and use of information that companies are required to submit under existing regulations. One of the report conclusions is a recommendation that EPA should develop a way to gather and share nanomaterial information throughout the agency and with the public. A possible mechanism to achieve this would be to create a nanomaterials specific website. Although EPA’s response to the report lauded the “significant steps” the agency has taken to provide information regarding nanomaterials to the public, EPA has reportedly agreed to take additional steps to expand its existing procedures for sharing nanomaterial information between its various offices. 

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2011 Finishes with Record Number of Nanotech 977 Patent Publications

Posted by J. Steven Rutt on Posted in Patent

Building on our prior December 10, 2011 blog post, we can now confirm as 2011 finishes that the PTO on Thursday set a record in publishing nanotech 977 patents. The final count for the year was 3,439. Last year was only 2,770, in contrast (2009 was only 1,499).

Will investors and the federal government take notice?

Coincidence? The last patent to publish was to GE, 2011/0320142! Our December 21 blog post noted GE patenting.

Nanotech Patent Counting in 2011: Record Numbers, Slight Growth… Good Management

Posted by J. Steven Rutt on Posted in Patent

Today, Tuesday, was the last day in 2011 in which the US PTO granted patents (actually, the clock is now unfortunately past midnight so seems it was yesterday now). The 977 nanotech patent count for 2011 is now in: 792 nanotech patents were granted (classified as 977 patents). That is up from 780 in 2010, and only 532 in 2009 (432 in 2008 and 352 in 2007). The total number of 977 nanotech patents now stands at 7,464, which means more than 10 percent of them issued in 2011.

The last patent for the year was US Patent No. 8,086,432 for a “Molecular Motor.”

Patent counting has its limits. Nevertheless, one famous company, it is reported, used to keep a “patent clock”  in the lobby which kept digital scoreboard of its patenting. Nanotechnology was an important aspect of that patent clock. There is a management idea that good management will only flow if that which is being managed is measured. Maybe.

Undoubtedly, patents will continue to be counted in 2012. Hopefully, that will lead to good management.