Join the nanotechnology community beginning Sunday, September 25, 2011 for three days of dynamic discussion among leaders from emerging areas of nanomanufacturing and commercialization of nanotechnology-enabled products. Foley is proudly sponsoring the panel, “A New Patent Era! Reform and Recent Court Decisions Impacting IP Strategy and Valuation” which will includes the following guest speakers:
- Henning Richter of Nano-C
- Joe Piche of Eikos
- Julie Heinrich of Plextronics
- Nina Pearlmutter of Qteros
The Summit is co-organized by the National Nanomanufacturing Network (NNN) and the NanoBusiness and Commercialization Association (NanoBCA) (formerly the NanoBusiness Alliance).
Click here for additional details on the Nanomanufacturing Summit 2011 & 10th Annual NanoBusiness Conference.
For additional information on patent reform, please visit www.foley.com/patentreform.
Hope to see you there!
I saw two items this week of note, illustrating a contrast in webpage activity for those that follow cleantech and nanotech:
- Karina Edmonds is the DOE Technology Transfer Coordinator and blogs about the role of technology transfer from government-sponsored research. One of my favorite technologies is GPS (for example, few things are better than getting into a cab at a new city and pulling out from your pocket a GPS on a smartphone – and with a few easy key strokes instantly have visually appealing maps to the hotel which show the taxi speeding along and closing the gap to the hotel in a cost efficient manner hopefully). Edmonds leads with GPS technology, which flowed from government sponsored research, as an example of the potential. This is but one example of the active and informative nature of the www.energy.gov webpage, which I appreciate.
- After a two month delay, www.nano.gov finally posted something new. In contrast to my impression for www.energy.gov, I have been disappointed that this web site, focusing on the NNI, has not been more active in recent months. The posting related to SRC-NSF university funding of nanoelectronics research, trying to find the next “switch.” I can only hope that this webpage will be activated and a priority in coming months.
We called the US PTO today to confirm one important point: universities and other applicants will have to wait for more rule-making to use the new micro entity status. This gives a 75% discount on many PTO fees for selected applicants, including qualified universities, per new 35 USC Section 123.
Many commentaries on patent reform have simply said the new micro entity law is effective September 16, 2011. However, rule-making must be considered.
Time will tell how long the wait is. University patenting and technology transfer is, of course, an important element of cleantech and nanotech.
Before signing patent reform legislation on Friday, September 16, 2011, President Obama spoke briefly of new federal innovation initiatives which include nanotech and cleantech. More detailed information has been provided.
Nanowerk reports some of the developments: "The National Institutes of Health will collaborate with the Defense Advanced Research Projects Agency (DARPA), and the U.S. Food and Drug Administration to develop a chip to screen for safe and effective drugs far more swiftly and efficiently than current methods, and before they are tested in humans. The chip will be loaded with specific cell types that reflect human biology. It will be designed to allow multiple different readouts that can indicate whether a particular compound is likely to be safe or toxic for humans."
DARPA’s press release, with an emphasis on vaccines, also was provided. The NIH also had a press release.
Some of the political framework, if not controversy, has been noted in the press.
In addition, an additional NIH press release focused on more efficient exclusive license options for start-up companies as part of the administration’s Startup America initiative.
President Obama finally signed the America Invents Act for patent reform and also provided interesting remarks before signing. A video of his remarks and his signing is available, including opening comments from a Thomas Jefferson student who has a patent already.
In addition, in the middle of the President’s remarks, he made some brief remarks about a new center at the NIH related to commercializing pharmaceutical drugs, about a hundred or more universities working together in new programs to commercialize research, and the commercialization of biotechnology generally which also links to cleantech. These vague remarks were fleshed out more in a White House press release provided today.
Technology innovation is tremendously important to our society, and tuning the patent system is important. One can argue our society will rise or fail depending on technology innovation. Few if any presidents, captured as they are by political intrigue rather than substance, have truly captured the innovation spirit. Obama seems to be trying and doing as well as anyone of them in modern times at least.
"There is a business adage that says, ‘You win in the turns.’ That is, when there are big shifts in the marketplace, the best companies gain market share and put distance between themselves and their competitors because they have the vision and flexibility to spot tectonic change and leap ahead when it occurs, while others are simply overwhelmed."
This interesting quote taken from a new book: Thomas Friedman & Michael Mandelbaum, That Used to be Us, How America Fell Behind in the World it Invented and How We Can Come Back, 2011, pages 34-35.
Assuming President Obama signs the patent reform legislation Friday as announced, we are at a fundamental turning point in the US patent system. By analogy, will the US win in the turns? I am very interested to see what sort of presidential remarks will be made with respect to innovation policy as part of signing this legislation, and whether they will move beyond platitudes and existing pronouncements. Earlier reports had indicated remarks may be made with respect to commercializing university research.
The central feature emphasized in the patent reform is moving to a first-to-file system. I have been reading much commentary suggesting that this fundamental change will help "large" companies and harm "small" companies. I also read much commentary that the key to new job growth resides with small companies. Hence, the government and private sector must watch carefully the impact of patent reform on new job creation.
In their new book, Friedman and Mandelbaum believe the US PTO and our patent system are a leading example of necessary regulations on private activity including safeguards and incentives. See pages 35-36. They also, however, cite a McKinsey report noting the PTO’s backlog as an obstacle to job growth. See page 322. Challenging days are ahead to reduce the backlog when some in Washington want to cut back on funding while more-and-more want to file new patent applications. The result could be more backlog. Hopefully, no one loses in the turns.
One of the central aspects of the recently passed patent reform in Congress is the elimination of the best mode defense by amendment to 35 USC Section 282. However, Congress did not in parallel eliminate the best mode from the requirements of 35 USC Section 112. In other words, the US PTO is still supposed to grant patents which satisfy the best mode requirement, but if that does not happen, this violation is not a defense in litigation. In past practice, the US PTO has not sought to evaluate best mode as part of examination.
Best I can tell, the odd legislation as passed represents two competing goals: (1) Congress likes a high-quality disclosure of the invention (hence, it did not amend section 112) ; (2) Congress does not want abusive litigation tactics based on best mode (hence, it amended section 282).
Note: the amendment to Section 282 also appears to remove best mode as a basis for an inequitable conduct defense. Also, best mode cannot be used as a basis for a post-grant opposition.
Quite possibly, the US PTO will provide further guidance on how it will treat best mode and what it expects from applicants in this new legal era. Also, some countries (e.g., Australia) may still require a best mode disclosure. One can check with an expert in each country. If one eliminates the best mode, one might eliminate something essential, which could impact enablement. In some cases, disclosure of the best mode might provide useful support for a non-obviousness position.
Hence, patent applicants need to stay awake. In particular, those working in the chemical, nanotech, and cleantech arts frequently encountered best mode issues. For example, a chemical patent was found by the Federal Circuit earlier this year to have been in violation of the best mode. However, one suspects that the US PTO will have its hands so full dealing with the new law that it will not have time to deal effectively with best mode issues.
Finally, the new best mode law is effective on the date of enactment and shall apply to proceedings commenced on or after that date. News reports and rumors have the President signing the legislation this Friday, September 16, 2011.
Patent reform is widely being discussed now since Congress passed the legislation last week and President Obama is waiting to sign the legislation. I found it interesting that a leading university group, AUTM, applauded the passage on their website, whereas a leading angel investor I listened to is against it. The issue there is whether the massive change and uncertainty would represent increased risk and prevent investments.
At a NanoBusiness Commercialization conference, we will be presenting a panel in Boston on Monday morning September 26, 2011 to discuss patent reform and other important developments in patent law. In particular, the panel will include representatives from the start-up community. We hope you can join us. Patent reform is not unique to the nanotech and cleantech innovation communities, but the communities thrive best on a well-functioning patent system.
Perhaps the leading clear point on patent reform is that organizations which master the new patent era will be better situated compared to those that do not.
Foley & Lardner, LLP, in addition, will be holding a webinar on September 14, 2011 on patent reform including input from the US PTO.
OK, Congress passed patent reform today. Finally. The PTO will certainly have a lot of work to do in preparing the regulations needed to implement the new law. Six years it took. There is an old saying about political debate, "Be brief, be brilliant, be gone." The reform process was not brief. Time will tell whether it was brilliant. The issues that drove it certainly are not gone.
The Senate – finally – will vote on patent reform today at 4 p.m. President Obama – finally – will sign the legislation soon after. The President’s speech on jobs is set for this evening, and patent reform may be mentioned in the speech. However, no one quite knows with certainty what the impact will be on the current unemployment rate.
Amendments to the bill were discussed yesterday, but it appears likely amendments will not impact the final bill.
Some media reports are concluding that the bill favors larger companies over start-up companies.
Cleantech and nanotech companies need to immediately understand the impact of this reform on their strategy. Perhaps the only certainty is that companies, universities, federal labs, and other entities, that do not understand the patent reform will be at a disadvantage compared to those that do.
The Senate is scheduled to debate patent reform on Wednesday September 7, 2011. This follows the cloture vote held on Tuesday evening, wherein the cloture vote was 93-5 to invoke cloture with only five Republicans voting nay. While patent reform is not unique to the cleantech and nanotech innovation ecosystems, patent reform will vitally impact cleantech and nanotech. Reform includes both what the federal government decided to change and what it decided to not change. I am guessing that even if patent reform passes soon, we will be hearing calls to improve the patent system faster than, well, a nanosecond.
Significant interesting OLED news seems to be crossing my desk more and more these days. Interest is high both for lighting and displays. OLED is part of the larger subject termed variously as “organic electronics” or “printed electronics.”
For example, UDC has been announcing a variety of new updates which resulted in a recent stock surge. On the IP front, OLED patenting is exploding. Academic work in the area is strong also as reflected in the recent SPIE meeting in San Diego with increased attendance and the upcoming fpi10 meeting in Beijing. In Russia, Plastic Logic is set to test their e-readers in schools (not OLED, but important development in organic electronics nevertheless). Finally, the Department of Energy continues to support OLED work.
Nanotechnology plays a significant role in OLED. For example, the OLED patent explosion is also evident in the US 977 nanotechnology patent literature. In this class, 229 patent publications (out of 9,741 as of today) refer to “OLED” or “organic light emitting diode.” Among these, two-thirds were published in 2010 and 2011 (152/229). Only 25 were published through 2007. That is a remarkable explosion. In addition, 12% were published with the government interest clause (27/229).