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!?

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.

Among other topics, join Foley & Lardner LLP and other industry leaders for an interactive discussion “Of Inter Partes Reexamination and Inter Partes Review: Preparing for the Transition.” Focal points of this particular discussion include:

• Comparing current inter partes reexamination protocols to inter partes review protocols under AIA
• Understanding the fine points of the new inter partes review procedure
• Revisions to patent challenger’s burden of proof under both procedures
• Exploring the scope of review for each procedure under 102 and 103
• Transition in presiding forums

Registration: Cleantech & Nano Blog readers are entitled a discount when referencing the code: CN 200

Additional Program Details

In response to the many questions surrounding these procedures and their mode of utilization, ACI has designed this conference on PTO Procedures under the America Invents Act to serve as your practical and tactical guide for PTO practice post- Patent Reform. An all star faculty comprised of top PTO practitioners, in-house patent counsel, and high ranking PTO officials will walk you through the challenges associated with anticipated regulations; the new priority landscape; supplemental proceedings; post-issuance procedures, including post grant review and inter partes review; and estoppel. They will help you develop the strategies that you need to assess your options within the scope of patent reform and when the utilization of these new procedures makes the most sense.

To enhance and complete your conference experience, ACI is offering the following training and strategy sessions:

• Patent Reform Boot Camp for PTO Practice: Laying the Foundation for New and Amended PTO Procedures under the America Invents Act will provide you with the legal and regulatory backdrop for the new and amended procedures discussed in the main conference; and
• The Master Class on Parallel Proceedings: Strategies for Preserving Causes of Action and Your Case in Chief in Multiple and Simultaneous Forums will provide pointers and tactics for simultaneous patent challenges before the PTO, Federal Courts and even the ITC.

For more information on this forum, please visit ACI’s Web site.

Join Foley online for regular updates, deadlines, and impacts of patent reform, visit us at www.foley.com/patentreform.

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.

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

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.

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.

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.

FDA also started the year by getting dinged on its management of nanomaterials in consumer products. A coalition of nonprofits filed a law suit against the FDA seeking to have the agency respond to a 2006 petition to require labeling of nanotech ingredients in consumer products and extra health and environmental assessments. The FDA currently has no regulations for the use of nanomaterials in food. The coalition criticized FDA for repeatedly saying it has the ability and authority to regulate nanomaterials in consumer products, but for failing to do so. Although FDA issued a draft guidance on nanomaterials in food in June 2011, the coalition claims this is but an initial step toward providing regulatory clarity. In the void that exists regarding the use of nanomaterials in food, another nonprofit, As You Sow, recently published a Sourcing Framework for Food and Food Packaging Products Containing Nanomaterials. The framework is based on the precautionary principle, and was developed as a practical tool that urges companies to seek information from their suppliers about the safety of food products containing nanomaterials. 

Will this criticism result in increased regulation of nanomaterials by EPA and FDA in 2012? Only time will tell.

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.

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.