Nano & Cleantech Blog : Nanotechnology Lawyers & Attorneys : Foley & Lardner Law Firm : Clean Technology, Green Energy

A potential "bombshell" is in the making which could ultimately impact nanotech and cleantech: 

On August 2, 2010, several persons with Fabry disease petitioned the federal government (NIH) to effectively break an exclusive license held by Genzyme for the drug Fabrazyme®. To date, the government has only reviewed three of these march-in petitions and, to date, has not granted any of them.

However, this time, lives are at stake and threatened persons are petitioning their government.

This time, the administration in power may review the petition with greater sympathy to the petitioners. President Bush's administration reviewed the last march-in petitions. What would Obama do? (Ok, what will the Obama administration do?)

If this petition is granted, important legal and policy implications will flow that influence all technical sectors like nanotech and cleantech which depend on federally funded inventions. At least ten percent of nanotech patents stem from federal funding.

Bayh-Dole "junkies" will follow these developments closely. Bayh-Dole is the legal system which controls the licensing of federally funded inventions to the private sector, and provides the legal context for the potential march-in.

Possible outcomes range from, for example, (i) some sort of settlement approved by the government, (ii) a narrow "breaking of the patent" which would not be too damaging to Genzyme and would be tailored to this fact pattern, (iii) a broad-based "breaking" of the patent with far-reaching implications to other situations, including nanotech and cleantech, or (iv) petition denied. 

How should the NIH rule?

A related NPR story.  

To read the petition to the NIH directly, read below:

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Register for July 29, 2010 at 12:00 p.m. Central

Foley's Rewards and Risks of “Green” Web Conference Series explores ways for executives in green technology industries to identify and leverage market opportunities while navigating legal and regulatory uncertainties.

Your innovation and IP assets drive your business growth and provide a critical competitive edge. When extracting monetary value from your IP assets — such as licensing efforts — what's not readily apparent can distract you from realizing profitability and even trap you into complicated disputes. In this series installment, How to Make Your IP Assets Work Double-Duty While Minimizing the Risks of Disputes, we will share first-hand experience from leading industry innovators to address methods for protecting the value of your technology investments via a well-managed licensing program and implementing safeguards from the hindrance of potential litigation disputes.

This discussion will include:

• R&D: Creating royalty revenue and leveraging IP assets
• License grants: Enforcement rights versus ramifications
• Patent infringers: Safeguarding and managing their pursuit
• Potential litigations: Vital financial and business considerations
• Licensing parties: Licensing large patent portfolios versus a broad range of technologies
   

Featured Guest Speaker:

Martin Hanssmann, President of AltaStream Energy Solution Inc.

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The University of Florida has started construction on the “Florida Innovation Hub.” This building will house a number of growing high-tech businesses in Florida. It also has drawn a number of companies that could provide services to these start-up companies, such as venture capitalists, lawyers and other tech inventors. The Hub will likely incubate 15 to 20 University of Florida spin-off companies at a time, in addition to a tech licensing group and six to eight service providers. 

This follows Florida’s trend in attracting high tech businesses and start-up companies to Gainesville. Gainesville’s high concentration of intellectual talent, low cost of living, climate and quality of life all translate to an ideal place for transforming great ideas into tangible and functional technology.  

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The 2010 Cleantech Energy Patent Landscape Report Executive Summary recently released by Foley & Lardner LLP highlights key findings from a review of nearly 825 granted U.S. patents specific to clean energy production, efficiency, and conservation technologies within 11 focal categories:

• Solar
• Wind
• Hydro
• Geothermal
• Biomass
• Nuclear
• Hybrid vehicles
• Fuel cells for vehicles
• Utility metering
• Smart grid technologies
• CO2 storage or sequestration

To aid industry executives, start-ups, individual inventors, and investors in identifying and leveraging market opportunities in this continually changing landscape, this annual analysis offers insight on regional cleantech activity, the specific technologies for which patent protection is being granted and who is obtaining these patents, focal points for venture capital investments, areas of patentable white space, and potential licensing availability for corporate entities.

For a copy of our full Cleantech Energy Patent Landscape Report, please contact John Lazarus at jlazarus@foley.com.

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An important theme in nanotechnology is state government pushing for economic development through funding of nanotechnology high-tech start-up companies and university technology transfer. Adding to this push, a recent report suggests that state governments should increasingly fund “home grown” high-tech start-ups rather than provide money to established companies. Home grown, turns out, provides better return for the state. The report, titled "Good Jobs, Strong Industries, a Better Pennsylvania: Towards a 21st Century State Economic Development Policy," was prepared by the Keystone Research Center and focused on developing jobs in Pennsylvania (see, for example, March 21, 2010 edition of the Pittsburgh Post-Gazette, D1, summarizing the report, case studies, and its implications). The reports’ implications, however, are national. In addition, the Keystone report also advocated for more transparency in how the state funding money is used and the results of the funding.

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The "reasonable royalty," that mythical and highly elusive number that some expert witnesses have built careers on, may at long last condense out of the ether. As Law360 has reported, Intellectual Property Exchange International ("IPXI") may soon become the first financial exchange for selling patent licensing rights as units (similar to stocks). As a result, publicly available financial information on the price of the license rights units could, for example, provide a frame of reference for the market value of such licenses.

For universities negotiating with start-ups, or start-ups negotiating with OEMs to commercialize intellectual property, the exchange may provide a valuable alternative to time-consuming and sometimes expensive development of complex license agreements. This may especially be true very early on with license negotiations for nanotechnology innovations.
 

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A technology transfer debate may be brewing which could impact nanotechnology heavily. First, the Kauffman Foundation set forth the idea that U.S. innovation could be improved by allowing faculty to choose their own licensing agents and not be limited by the university technology licensing office. Then, the Harvard Business Review recently elected this idea as a top 10 idea for innovation in 2010. Now, the Association of University Technology Manager (AUTM) plans to rebut the Kauffman Foundation idea:

"Kauffman alleges that technology licensing offices are “underperforming” and are a “major impediment.” AUTM does not believe this is the case and wants its membership to know that it is taking a proactive stance by preparing a response to the article. Stay tuned for details as they emerge."

Nanotechnology relies heavily on federal funding, technology transfer, and university inventions so the outcome of this debate is vital. We see in practice examples of complicated, successful, and/or difficult relationships among the complicated triangle of professors, university technology transfer offices, and private sector companies seeking to license from the university. An initial perspective: it might be interesting to see how the system would work in some "test case situations" where a university voluntarily allows its professors to work with other licensing agents. 

We will continue to follow this issue as it develops.

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