One aspect of the current patent reform debate is whether the CREATE Act will be preserved or modified. Briefly, the CREATE Act seeks to promote joint research activities and allows, in essence, one to exclude as prior art selected patent filings from other parties to a joint research agreement. The statute requires that the patent application be amended in a way to reflect the CREATE Act, so one can monitor patents and published applications for use of the CREATE Act.
The current version of H.R. 1249 purports to preserve in full the specifics and the intentions of the CREATE Act. For example, the House Committee Notes refer to this issue on pages 4 and 43.
We briefly checked nanotech class 977 patents and patent publications for use of the CREATE Act. For the granted patents, only seven 977 patents refer to joint research agreements and list the parties to the agreement. For nanotech class 977 patent publications, only 11 patent publications refer to joint research agreements and refer to the parties of the agreement. Hence, while the CREATE Act may be important, statistically, the CREATE act is not being invoked very frequently, at least in the nanotech space. One point noted is that many of the nanotech 977 patent documents resorting to the CREATE Act involve parties located outside the United States.
This week, an unusually large earthquake struck DC quite unexpectedly. The question arises how has nanotechnology impacted earthquake technology? A quick search of the US patent publication literature showed not much when the search is limited to the 977 nanotech class. Only a handful of the publications show use of the term "earthquake" and, of these, the term does not appear in the claims or abstract. Earthquakes are a potential application for sensors and new materials, for example. See, for example, US Patent Publication Nos. 2008/0314149; 2009/0179523; 2009/0220767; and 2010/0132465. Perhaps the international patent literature would reveal more.
Perhaps a next search for next possible natural disaster in the DC area: hurricanes? See, US Patent Publication 2008/0016819 for a hurricane door (with nanocomponents).
We continue to monitor patent reform including provisions of particular importance to the nanotech and cleantech innovation ecosystems. Some of these new provisions are seemingly small points. Nevertheless, they may be representative of larger issues and problems. For example, Section Ten of H.R. 1249, the core legislative document at the center of the current patent reform, establishes a new feature of the PTO fee structure for so-called micro-entities. Micro-entities receive a 75% fee discount. This micro benefit supplements the prior small entity designation which will continue under H.R. 1249 and provides a 50% discount. The complexity of the Section 10 provision, however, appears to be anything but small and micro. The legal trend seems to be that the smaller the entity, the larger the complexity.
Variables to consider in coming to a complete understanding of the new micro-entity provision include gross income, median household income (as reported by the Census Bureau), prior employment, foreign currency exchange rate (as reported by the IRS), and the Higher Education Act of 1965. How much legal analysis and cost will be needed to achieve the micro-entity status in good faith? Universities and colleges, as well as individual inventors, appear to be targets of the new provision.
This is but a small provision of patent reform (no pun intended). However, this small provision is representative of larger trends and problems with respect to patent law. Sometimes, we have observed from patent law changes in the past two decades that the patent system appears to generate significant complexity in trying to "be fair." Examples include small entity and Patent Term Adjustment. However, the added complexity is not welcome in many quarters. We dialog with inventors and applicants that, as we hear them, primarily desire for a simplification of the patent system.
The new micro-entity provisions are not unique to nanotech or cleantech. But the nanotech and cleantech ecosystems comprise heaving inputs from the universities. Hence, the provision is important.
Also, the new micro-entity provision is not a new idea. We easily found PTO proposals for this dating back to 2002.
Lord knows what complexity will happen when someone in the future proposes the next phase of reform, supplementing small entity and micro-entity, perhaps proposing the increased complexities of a nano-entity?
Current wisdom noted by some if not many pundits (and/or lawyers) is that patent reform could be passed as early as September. One rationale for the September push is job creation. Certainly, patent lawyers will be kept busy based on the complexities of the issues at hand. Patent applicants and the whole innovation ecosystem will have to react quickly when final legislation passes.
Over a half dozen categories of reform are dealt with based on current legislations passed by the House and the Senate earlier in 2011. These categories range from PTO fee issues to litigation defenses; from first-to-file system to post-grant opposition of patents. Special interest pecularities are sprinkled in as well. One possible outcome is that final legislation will mirror the current House version.
How will this legal revolution impact cleantech and nanotech? The lobbying debates over this legislation, which stretch back for years, has not focused on cleantech or nanotech. The general debate has been between pharma and "tech" companies. While cleantech and nanotech covers a broad swath of commercial entities, in general, cleantech and nanotech likely falls closer to the pharma side. Many technologies in cleantech and nanotech will take a decade or more to reach market fruition, much like pharma. A strong patent system is needed to encourage investment. Like any innovation community, cleantech and nanotech companies will need to file strong patent applications from the start to benefit fully from the patent system.
Our June 27, 2011 blog noted section 25 which would allow for priority examination of cases related to technologies of national economic importance. Cleantech would certainly fall into that category, at least under the Obama administration. However, the US PTO already has an accelerated examination system for cleantech. At last count, as of August 11, the US PTO had granted 435 greentech patents (resulting from accelerated examination) and granted 2,250 accelerated examination petitions.
The forces leading to a possible September resolution are perhaps now set after years of lobbying and compromising. Nevertheless, the PTO is taking your comments as it will need to pass rules to adapt to the new law. Cleantech and nanotech will watch and respond quickly to the new law, if and when enacted. The new Congressional budget cutting "Super Committee" may also influence spending aspects of the changes including PTO fee diversion.
Whatever the legal wrangles, its time for America to invent more, faster, and better. Hopefully, the law will encourage that outcome. Hopefully, it will not just be a "legal employment act." We will plan to monitor patent reform and be ready to discuss it as needed at our panel at the 10th Annual NanoBusiness/Nanomanufacturing Summit, to be held in Boston September 25-27.
MSNBC featured a newly published paper in Nature Nanotechnology which – can’t speak for others – struck me as very significant work. In the paper, bacteria are studied which provide for nanofilaments and films which conduct electricity at relatively high conductivities. The conductive materials are amino acid based. One can regulate the gene expression; one can build transistors; etc. etc. ! The paper is entitled "Tunable Metallic-Like Conductivity in Microbial Nanowire Networks." Also striking is that the work arises out of a Physics Department rather than a biology or chemistry department. The work originates out of University of Massachusetts.
Protein electronic conductivity was recently reviewed. Also, last year, MSNBC also featured an article "Nanowire-Armed Bacteria are more than Alive."
Concepts of electronic transport in biological material is not new, of course. However, solid state or "dry" electronic conductors with higher, metallic-like conductivity?
Interesting patent strategies would seem present, particularly in view of the current "Myriad" case controversies about patenting materials found in or derived from nature.
Subject to the usual carefulness and skepticism required by science and law, …simply amazing.
It has now been about seven weeks since the Materials Genome Initiative (MGI) was announced by the Obama Administration. Not too much public activity appears to have happened over these seven weeks (the University Materials Council, not surprisingly, endorsed the MGI in a July 27, 2011 letter). We noted the MGI in our June 25, 2011 blog, and will attempt to follow MGI developments particularly as applied to nanotech and cleantech. The Obama administration is apparently seeking $100M for FY 2012 funding and will begin "roadmap" work to develop the ideas more.
The MGI is summarized in an 18 page "white paper," and relates to …
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The DOE, via a Shale Gas Advisory Subcommittee, issued a 41 page report on August 11, 2011. Among the various important findings, we noted near the end the R&D finding at pages 30-33. The Report noted, for example:
- an additional area of focus should be "development of "green" drilling and fracturing fluids."
- multiple-well pad drilling is one significant advance.
- areas where government can and should contribute such as environmental and safety studies and longer term R&D (e.g., research on methane hydrates).
Media provides further analysis of the Report’s key findings. The DOE also reviews the report.
Monitoring patent literature will be an important effort to monitor shale gas innovation. Also on August 11, the US PTO published a dozen hydraulic fracturing patent applications. This included a series of five Haliburton Energy Services, Inc. patent publications relating to use of small tech MEMS sensors. Our growing data base of shale gas U.S. patents for 2011 alone now numbers 131 through August 2, 2011.
Aerogel patenting is holding steady. For example, since 2004, 78-110 US patent publications consistently emerge each year which cite “aerogel” in the claims or abstract. 2011 is holding steady with a projected number at 94. Aerogels are a unique nanomaterial, known for their lightweight and insulation properties. Some of their history can be found on the web. Important markets can be found in the cleantech space. Surprisingly, only 29 of all of the aerogel patent publications were deemed to fall within the 977 nanotech classification.
Aspen Aerogel recently filed for an IPO. In addition, Cabot continues to sell aerogel materials.
The DOE is staying active this summer (despite Washington budget quagmires) and now provides us with an upgraded web page. Several highlights today include:
1) Major loan guarantee for solar ($967 M) !
2) Updates on the SunShot solar program: $50 M is provided.
3) Updates on the "America’s Next Top Energy Innovator" challenge: Ames Laboratory and Iowa Powder Atomization Technologies (IPAT) are the subject of the new reduced fee, streamlined licensing program.
In the DOE view, nanotechnology is expected to make significant impact on areas such as solar, batteries, and water purification.
The above is just a sample.