In June 2011, several federal agencies issued policy guidance documents regarding the regulation of nanomaterials. Although the guidance documents were issued by several different agencies, including the Office of Management and Budget, the Food and Drug Administration (FDA), and the Environmental Protection Agency (EPA), they all convey the need to strike a careful balance between protecting human health, welfare, and the environment while fostering regulatory certainty for businesses on the forefront of innovation of nanomaterials and nanotechnology. The guidance documents issued by FDA and EPA were published in draft form, and public comments must be submitted by August 15, 2011, and July 18, 2011, respectively.
Patents are much in the press these days with respect to patent reform legislation, recently passed by the House and Senate. More quietly on the patent front, however, the US PTO today granted its 7,000th class 977 nanotechnology patent (patents grant each Tuesday, and the total count for 977 patents now stands at 7,001). The grant is part of the larger drive where soon the PTO will grant its 8,000,000th patent!
The 7,000th nanotech patent is US Patent No. 7,968,609 assigned to Prototech AS, a Norwegian company. The patent relates to sol-gel processing to make mixed gels and nanoparticles (sol-gel is a critical aspect of nanotechnology). Application in the ’609 patent focuses on the solid oxide fuel cell (SOFC). Hence, it is a cleantech patent. The patent is also assigned the subclass 773 which is for nanoparticle patents.
The US PTO now grants many more 977 patents than they have in the past (roughly double the number). This year (prorated), the PTO is granting at a rate of 770 per year. Last year saw 780 patents grant. In contrast, the numbers is past years were far less (2009: only 530; 2008: only 431; 2007:only 344; 2006: only 276).
In the past, many commentators have discussed the potential for a nanotechnology patent thicket. This useful PTO program for classifying 977 nanotechnology patents can help interested parties efficiently sort through the patent literature and avoid that thicket.
The story reports that Calera, a California company working to provide "green cement" for use in building construction, has fast-tracked twelve patent applications through the Green Technology Pilot Program.
The story was presumably intended to provide a concrete (get it?) example of the successes available using the USPTO’s Green Technology Pilot Program, but updated Pilot Program statistics continue to indicate less than heavy utilization by applicants. The USPTO reports that 1,918 petitions under the Green Technology Pilot Program have been granted to date. This pace indicates that the program will not likely reach its maximum of 3,000 granted petitions prior to the Pilot Program’s planned expiration date on December 31, 2011. 328 patents have been issued under the Pilot Program.
Last week, the House passed complex patent reform legislation, HR 1249. In considering how this might be reconciled with a Senate version passed earlier this year, PTO fee diversion is a key issue. Many in the high tech community, including cleantech and nanotech, would like to see fee diversion end so as to promote a stronger US patent system. However, another issue was noted by Erin Coe’s article in IPLaw360 which links to the PTO’s green tech accelerated examination program. Coe writes:
"Another measure only mentioned in the House bill authorizes the USPTO to grant priority examinations to technologies that are critical to the U.S. economy.
The USPTO already has a pilot program in place allowing a certain number of green technology patent applications to take priority over other patent applications, but this provision would give the USPTO director broader authority to declare other technologies important and allow those patent applications to go to the front of the line, Bloch said.
“That’s a power that could be abused and it could be controversial in the reconciliation process,” he said. “If semiconductor technologies are promoted, the pharmaceutical industry or the automobile industry may ask why their technologies are not important to American competitiveness.”"
The text of the bill at issue, section 26, is provided below:
SEC. 26. PRIORITY EXAMINATION FOR TECHNOLOGIES IMPORTANT TO AMERICAN COMPETITIVENESS.
Section 2(b)(2) of title 35, United States Code, is amended–
(1) in subparagraph (E), by striking ‘and’ after the semicolon;
(2) in subparagraph (F), by inserting ‘and’ after the semicolon; and
(3) by adding at the end the following:
‘(G) may, subject to any conditions prescribed by the Director and at the request of the patent applicant, provide for prioritization of examination of applications for products, processes, or technologies that are important to the national economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization, notwithstanding section 41 or any other provision of law;’.
Two contrasting new items caught my eye regarding cleantech and the role of government in cleantech funding.
First, in a positive, optimistic tone, ARPA-E recently released its 2010 report. ARPA-E, according to the report, has now funded 121 projects for over $350 million dollars. The report also has some interesting reading about technology’s development stages and the use of federal government spending to leverage private investment. The report also summarizes the geographical distribution of the funding and the type of receipient.
We also noted 20 of the 121 projects directly refer to "nano" in their summaries. Numerous others relate to nano without using the term "nano." Quietly, nanotechnology is a leading force in cleantech.
On a more "down" tone, flavored with pessimism, the Washington Post reported this morning about concerns over President Obama’s extensive focus on cleantech including visits to cleantech companies. Some of the issues include how much due diligence is carried out before the visit and how many jobs cleantech is creating. For example, the article reports:
"Obama’s unwavering focus has helped him fulfill a campaign pledge to push clean tech, from solar energy and wind power to electric vehicles. But it also has come with political exposure: By emphasizing a sector in which the risks are high, the president has prompted questions on Capitol Hill and from industry about the wisdom of his singular strategy and his political ties to some of the companies chosen for federal attention."
Ok. It appears difficult to make everyone happy!? After all, many have concluded that the U.S. is "falling behind" Europe and East Asia in cutting edge sectors such as cleantech and nanotech. We are now entering presidential election season, and it will be more-and-more interesting to see how cleantech will be debated by those in the arena.
These are busy times for those following innovation law and policy including nanotech and cleantech. Manufacturing and patents are central themes.
First, I was in Pittsburgh Friday when President Obama visited Carnegie Mellon University and announced the Advanced Manufacturing Partnership (AMP) (text attached below). AMP flows from the attached "Report to the President on Ensuring American Leadership in Advanced Manufacturing," June 2011, President’s Council of Advisors on Science and Technology (PCAST) (also attached below).
In addition, on Thursday, the House finally passed a bill on patent reform, following the Senate’s passage earlier in the year.
The PCAST Report featured several angles on nanotechnology. The Report discussed areas where promising, useful technologies face potential market failure, which suggests government should play a stronger role in promoting the technology through, for example, public-private partnerships. Several specific examples were discussed including nano-scale carbon materials, nanotechnology enabled medical diagnostics, flexible electronics, and next-generation optoelectronics. The Report also comments on the criticality of nanoelectronics. The PCAST Report noted only briefly the role of patents, noting China has a strong patent initiative.
Furthermore, another new initiative from the Obama Administration is the Materials Genome Initiative (also attached). The gist is to use computational and combinatorial methods to speed up materials commercialization.
What will be next? One new development linked to all of this is that the Pennsylvania Nanomaterials Commercialization Center, with offices in Pittsburgh, has announced a new round of funding focusing on energy applications (Idea Submission deadline, July 20, 2011, http://www.pananocenter.org/) Pittsburgh is also a center for the western Pennsylvanian Marcellus Shale commercialization push. While innovation is a national issue, Pittsburgh certainly is a leading point of focus in current innovation and econonmic issues. This explains the President’s visit.
Hydraulic fracturing patenting continues to grow, including technology related to nanotech and cleantech. For example, on last Thursday, June 23, 2011, the US PTO published 13 new US patent applications which refer to hydraulic fracturing. That brings the total to 184 for 2011, which prorated annually is 383 for 2011 - far higher than the average for the past six years (259). Nine of the 13 publications focus on chemistry and materials.
Two patent publications list General Electric as assignee and relate to separating oil from water (2011/0147316 and 2011/0147306).
One patent publication from Schlumberger Technology Corp relates to nanotechnology, "Delivery of Nanodispersions Below Ground" (2011/0146974). Last week also featured another filing on use of graphene (2011/0144386, June 16, 2011, from Professor James Tour et al. and Rice University).
Other listed assignees include Baker Hughes, Halliburton Energy, and Petro-Hunt.
The abstract for the Schlumberger patent publication on nanodispersions is below.
The Economist featured quantum dot commercialization in displays as its lead science and technology article in its June 18, 2011 issue (pages 85-86). For example, Nanosys is reported to be working on quantum dots applications for LCD displays. OLED display technology is discussed, including quantum dots potential role in OLED. Finally, quantum dot application in solar is also noted. Additional companies noted include Samsung Electronics, QD Vision, and Nanoco.
The article concluded:
"Quantum dots, then, look as if they have a bright future. Much hype has surrounded the idea of nanotechnology – the thought that manipulating objects on the scales of a billionth of a metre will produce useful products. So far, the results have been less than spectacular. Dots, though, may prove an exception."
I would phrase it quite differently. Nanotechnology is central to much of innovation in the "real world" including advances in energy and medicine (contrasting real world with innovation genre such as social media, software, and the internet). Innovation in this "real world" takes time to turn into useful products, in some cases decades of time. Many barriers to commercialization have been identified including length of time between research and commercialization, the valley of death, the need for expensive infrastructure, lack of experience with large scale production at universities and start-ups, etc. Energy and financing should focus on solving such problems, not on hyped expectations devoid of realistic timing.
This week, another 87 nanotech class 977 patent applications quietly published at the US PTO from applicants around the world working in diverse application spaces. Contained therein will be commercialization jewels quite possible very free from hype and improving our energy and medicine situations.
I was curious about which law firms obtain the most class 977 nanotech patents.
So I searched the US PTO public database for granted patents focusing on the legal representative search field combined with the 977 classification search field. I searched firms which, from my experience, seemed to be active with nanotechnology. Also, I searched the top 25 patenting firms listed in Intellectual Property Today each year.
Best I can tell, as of June 21, 2011, four firms "float to the top" with having more than one hundred class 977 nanotechnology patents. Three of the four are large IP "boutiques" (Oblon, Spivak (176 patents); Fitzpatrick, Cella (174 patents, with virtually all of them listing the same company as assignee); and Fish & Richardson (112 patents).
The fourth firm is the only general practice firm: Foley & Lardner (109 patents, sponsor of this blog).
Congratulations to these firms for their contributions to nanotechnology patenting.
Also, most likely, the PTO will grant the 8,000th class 977 nanotech patent next Tuesday, June 28.
We were pleased to see the cover story for the June 12, 2011 Chemical & Engineering News featured nanotechnology in the construction industry (pages 12-17, http://pubs.acs.org/cen/coverstory/89/8924cover.html). For example, nanostructured titanium dioxide in cement can be used to keep structures white despite air pollution. Other applications include addressing cleantech or sustainability. For example, use of nanoparticulate silica can increase ability to use fly ash in cement which helps the environment.
The article mentions BASF’s work in this area. We noted BASF has a recently published 977 patent application for titanium dioxide nanoparticles (2011/0143923, published June 16, 2011). Indeed, adding to our past blog comments, 81 new 977 nanotech patent applications published this week, continuing a strong trend. The article also highlights nanostructured steel and window glass.
A BASF executive is quoted as saying: "The nanotechnology ideas finding their way into construction in a practical way are probably now starting to gain momentum because the first commercial products have finally hit the shelves."
Nanotechnology in construction was already featured in this attached 2006 report (56 pages): http://www.innovationsgesellschaft.ch/images/fremde_publikationen/nov06_nanoforum.pdf. See also recent article on same: http://pubs.acs.org/doi/abs/10.1021/nn100866w
Two more hydraulic fracturing patents were granted this week (Tuesday, June 14, 2011). Each patent was assigned to Halliburton Energy Services based on information on the cover of the patent. The term "Halliburton" now appears in 502 granted US patents which also use the term "hydraulic patenting," establishing Halliburton as a leading company for patenting in this arena.
The patent numbers were 7,960,316 and 7,960,315, and the patents related to corrosion resistance and to gellation agents.
Halliburton provides more information about its hydraulic fracturing operations on its website, attached below, including its CleanSuite(TM) technology.
The International Herald Tribune today (June 14, 2011) presented an important article called "U.S. Venture Capital Flowing Toward Europe." This caught my eye, in particular, as I am writing from Brussels this week. In areas like cleantech and nanotech, many seem to "worry" that Europe as a region has taken the lead from the United States.
The gist of this important article can be found in its conclusion that "U.S. venture capitalists, later-stage technology investors and software companies are paying more attention to targets in London, Paris, and Munich, upping their exposure to a region some had all but written off."
The goal in looking to Europe is to find "hidden" investment gems. Also, we note that central to U.S. innovation is Silicon Valley, a regional sector for which Europe has no counterpart. A question often arises: how can one reproduce Silicon Valley innovation in other regions? In the U.S., part of the answer usually refers to the Silicon Valley entrepreneurs’ willingness to fail in the longer term goal to innovate. So I read with irony in this important article where, with respect to Europe, a founder of Skype said, "The biggest obstacle we have is cultural. People are afraid of failure."
Perhaps failure is something that should be feared in certain contexts? But we should appreciate those that take the risks, whatever the outcomes. Whether for the US or Europe, or any other region like East Asia, the various degrees of risks can be balanced so both cutting edge innovation (revolutionary innovation) and more mundane improvement innovation (evolutionary innovation) can be achieved. We certainly appreciate how Europe has pushed cleantech commercialization, including allowing US companies to find markets and partners.
Foley’s 2010 Water Technology U.S. Patent Landscape Report Executive Summary highlights key water technology trends from our full review of 584 patents issued in 2009 in the United States among seven different water technology categories:
Building upon our 2009 analysis, the 2010 Report provides further perspective on primary areas of investment and development as well as possible opportunities for future investment and innovation.
For more information or a copy of the full 2010 Water Technology U.S. Patent Landscape Report, please contact me at email@example.com.
Hydraulic fracturing-related patenting efforts continue to grow. For example, six new patent applications published this past Thursday (June 9, 2011) which refer to hydraulic fracturing (see below). Not surprisingly, many of the inventors are from Texas. Water treatment is a theme for two of the patent applications. The Obama administration continues to study hydraulic fracturing as it has become a core element in energy policy (see (http://www.nytimes.com/2011/05/07/science/earth/07frack.html). The administration should urgently fund innovation to supplement private sector efforts in this arena.
We have commented before about the rapid rise of nanotech 977 patenting (see our May 27, 2011 blog entry, for example). This past week (June 9, 2011), a large number, 78, of new patent applications published under the 977 nanotech classification, which again validates the proposition that nanotech patenting is increasing. I continue to be impressed by the diverse applications and the diverse applicants.
Too bad that the www.nano.gov web page covering the NNI does not seem to be updated much these days (last news continues to be April 25, 2011). Five of the 78 patents had a government funding clause - I know the government is interested in what is getting patented with its funds as an indicator of commercialization trends. Time to update the NNI web page???
Nanotech made headlines on June 9, 2011. Tom Kalil from the Office of Science & Technology Policy (OSTP) wrote about nanotechnology, informing readers about regulatory updates in nanotechnology. A series of government agencies including the OSTP, EPA, FDA, USTR, and OMB issued guidance on nanotechnology regulation. Goals include:
- consistent approaches across different emerging technologies
- protection of public health and environment
- avoid unjustifiably inhibiting innovation
- avoid stigmatizing new technologies
- avoid creating trade barriers
The Supreme Court on June 6, 2011 rejected Stanford University’s argument that it owned important patents. See, Stanford v. Roche, 563 U. S. ____ (2011). This case is complicated and subtly important, as noted in my prior blogs from December 11 and November 1, 2010. The impact will be felt for all high technology including cleantech and nanotech, as well as life sciences.
The trouble arose, in essence, when Stanford started working with Roche on PCR technology, and conflicting contractual claims to patent ownership arose. In the modern economy, university patenting is vital to innovation, and university-corporate cooperation and partnering is even more vital to innovation. The Bayh-Dole system, now 30 years old, helps control the patent title and licensing issues at play for government funded inventions which are licensed to the private sector. In this ruling, Stanford lost despite its assertion that the Bayh-Dole Act provided it with patent title despite competing contractual claims from Roche. In resolving the issue, the Supreme Court analyzed the issue cautiously and narrowly and did not pursue a more aggressive, creative policy approach in favor of Stanford.
The case is also important because the Supreme Court flatly rejected the Amicus Curiae filed by the Solicitor General’s office in supporting Stanford’s position. In the brief, the Solicitor General argued that Stanford’s position was supporting the purposes of the Bayh-Dole Act. Hence, Congress (with Presidential blessing) now faces the option to amend the Bayh-Dole Act to better control the types of situations that can arise as Stanford found itself in. Allegedly, this would better align the words of the statute with the purpose.
In the meantime, universities and similar institutions will need to be ever vigilant about their assignment contracts until such amendment to Bayh-Dole is passed. Technicalities can count in patent assignment.
The decision was 7-2 with Breyer and Ginsburg dissenting. Also of note was the dissent’s reference to prior Federal Circuit FilmTec caselaw which was deemed an alternative angle for parties situated like Stanford to argue for in future litigation. However, the FilmTec line of argument was not pursued here. It may arise in future litigation.
Ironically, in 2004, I had drafted a short article called “Government Rights in Nanotechnology IP: Remembering FilmTech and CellPro Before it is Too Late.”
Agreed… seven years later, it is time to remember FilmTec. But that may be too late for this Stanford case? Note: in the context of this blog, FilmTec related to nanotech filtration membranes for water treatment.
We provide more insights into the connections between hydraulic fracturing and nanotechnology, building on our April 28, 2011 blog posting. As before, we focus on patenting as a leading indicator on the commercial ideas floating in the public domain. In our prior post, we focused on patent publications; here, we focus on granted patents. Nanotechnology connections can be found in the nanopores through which gas or oil flows, in nanoparticles and proppant design, in nanosensors, in nanofiltration.
In brief, a rapid rise in patent activity is evident. For example, while 178 granted US patents show use of the terms "hydraulic fracturing" and "nano$," about two-thirds (67%) were granted in 2009-2011 (present, as of June 2, 2011). Even more, 83% were granted in the past five years (2006-2011, again, as of June 2, 2011).
A survey of the patents confirmed that many of the patents are substantively indicative of the connection between hydraulic fracturing and nanotechnology. For example, USP 7,772,163 is for lightweight proppants (BJ Services). We are currently examining more the categories of patents.
Scott E. Rickert of Nanofilm has also recently written about connections between nanotechnology and gas and oil recovery (March 18, 2011, see http://www.industryweek.com/articles/nanotech_and_middle_east_revolution_24153.aspx?Page=1).
I was reading with great interest Groupon’s S-1 from its IPO filing this week including the letter from Andrew D. Mason at the front which includes memorable quotes such as:
"Our customers and merchants are all we care about."
"We are always reinventing ourselves."
"We are unusual and we like it that way."
"Life is too short to be a boring company."
Time will tell whether Groupon can maintain its competitive advantage, how the larger IPO scene plays out in 2011, and how cleantech IPOs like Solazyme will contribute to the larger IPO scene. Intellectual property lawyers should all be watching for how IP strategies will impact Groupon’s fate.
In Budapest today, a conference is being held under the theme of "What is keeping nanotech innovation policymakers awake at night?" (ObservatoryNANO workshop). Good question. The Budapest discussion themes include "measurable indicators." Patents, of course, are one critical measurable indicator, and the U.S. innovation policy makers should be watching patents carefully.
Later this year, the USPTO is expected to grant its 7,000th class 977 nanotechnology patent. The 977 patent count as of Tuesday May 31, 2011 stood at 6,937. The USPTO granted twelve more nanotech 977 patents yesterday.
The twelve patents granted yesterday reflect the diversity of the nanotech innovation ecosystem.
For example, nanotech is influencing cleantech as seen in USP 7,952,105 for efficient LED lighting. This patent is apparently owned by Global OLED Technology LLC and relates to quantum dot technology. The patent was originally with Eastman Kodak but sold to LG Electronics and owned now by Global OLED. Reportedly, Idemitsu Kosan owns a significant stake in Global OLED. The IP flow from Kodak to LG Idemitsu has important long-term policy implications for manufacturing which should be monitored.