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Category Archives: General

Nanotechnology and Metallocenes, Behind the Scenes.

Posted by J. Steven Rutt on Posted in General

A recent press report has discussed how metallocene polymer catalysts have "risen again." How does this connect with nanotechnology? 

The gist is metallocenes were a hot industrial fad 10-20 years ago for providing new commercial plastics which would displace older ones. Large numbers of dollars and yen were at stake. The future seemed bright. Then the hype died down for metallocenes, and commercial progress was slower than expected. Technology hurdles. High costs.  Etc. Patent metrics showed the trends.

Now, however, with steady technical progress, much of it behind the scenes, and patience, metallocenes again have a bright future and are set for sustainable growth.

Monitoring dramatic changes, hype, and new trends is FUN, undoubtedly….and a natural sibling for media. However, "behind the scenes" work, outside the media spotlight, is just as important.

After experience its own form of "hype" 5-10 years ago, nanotech is currently experiencing a large volume of behind-the-scenes activity. Stay tuned.

C&EN’s feature story in the October 18, 2010 issue focused on the rising again of metallocene catalysts.

Breakthrough Material from Nanotechnology: Here’s One

Posted by J. Steven Rutt on Posted in General

For those interested in hunting for nanotech breakthroughs, here is one. Media reports are circulating about a recent paper where nanospheres are used to make the stiffest organic material yet made. The materials are based on aromatic dipeptides which self-assemble. The spheres have diameter of 30 nm to 2 microns. The material is said to be stiffer than stainless steel or Kevlar!

Is this nano biotechnology or nanomaterials?

The work comes out of Israel: the Weizman Institute of Science and Tel Aviv University.

See, Adler-Abramovich et al, "Self-Assembled Organic Nanostructures with Metallic-Like Stiffness," Angewandte Chemie, Int. Ed., published September 28, 2010.

Time will tell how quickly commercial applications can be found (and money made). There is defense also.

Super Glue and a Prize – Harry Coover

Posted by J. Steven Rutt on Posted in General

Harry Coover won the National Medal of Technology and Innovation this week for the discovery of cyanoacrylate glues, otherwise known as "superglue". Congratulations! Good to see advanced materials and industrial research receiving recognition. Below is the Wikipedia account summarizing his work. Note the role of serendipity, long term patient research, and ability to adjust the technology to the market need. Programmed Innovation.

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Harry Coover (born Harry Wesley Coover, Jr. on March 6, 1919) invented cyanoacrylate glue, commonly known as Super Glue or Eastman 910.

Dr. Harry W. Coover, Jr. is an inventor, an innovator, and an accidental glue guru.

Coover was born in Newark, Delaware and received his Bachelor of Science from Hobart College before earning his Master of Science and Ph. D. from Cornell University. He worked as a chemist for Eastman Kodak from 1944–1973 and as Vice President of the company from 1973-1984. and now resides in Kingsport, Tennessee.

In 1942, while searching for materials to make clear plastic gun sights, Coover and his team at Eastman Kodak first worked with cyanoacrylates, rejecting them as too sticky. Nine years later, Coover was overseeing Kodak chemists investigating heat-resistant polymers for jet canopies when cyanoacrylates were once again tested and proved too sticky. That time around, however, Coover recognized that he had discovered a unique adhesive. In 1958 the adhesive, marketed as Super Glue, was introduced for sale.

While much attention was given to the glue’s capacity to bond solid materials, Coover was also the first to recognize and patent cyanoacrylates as a tissue adhesive. First used in the Vietnam War to temporarily patch the internal organs of injured soldiers until conventional surgery could be performed, tissue adhesives are now used worldwide for a variety of sutureless surgical applications.

Coover holds 460 patents, and Super Glue is just one of his many discoveries. He views "programmed innovation," a management methodology emphasizing research and development, among his most important work. Implemented at Kodak, programmed innovation resulted in the introduction of 320 new products and sales growth from $1.8 billion to $2.5 billion. Coover later formed an international management consulting practice, advising corporate clients around the world on programmed innovation methodology.

Coover received the Southern Chemist Man of the Year Award for his outstanding accomplishments in individual innovation and creativity. He also holds the Earle B. Barnes Award for Leadership in Chemical Research Management, the Maurice Holland Award and is a medalist for the Industrial Research Institute. In 2004, Coover was inducted into the National Inventor’s Hall of Fame.
 

Playfulness, Nanotechnology, and the Nobel Prizes

Posted by J. Steven Rutt on Posted in General

Nobel Prizes were granted this past week, and the Physics and Chemistry Prizes each touched on nanotechnology and advanced materials. See www.nobelprize.org. 

First, in awarding the Physics Prize, the Nobel committee said, "Playfulness is one of their hallmarks…"  The awardees were Andre Geim and Konstantin Novoselov of the University of Manchester for their work with graphene. Graphene is the latest new "nanomaterial," following past discoveries of materials like fullerenes, carbon nanotubes, quantum dots, and other nanostructures. Graphene is a single sheet (or layer) of carbon atoms which, surprisingly, can be stable and isolated as a single sheet without merging into larger structures. Unusual properties for this material appear to abound, and commercialization prospects have just started. In a quick search of US patent literature, we could not determine any published patent filings from Geim or Novoselov on their graphene work. Clearly, however, one can detect rapidly increasing appearances for "graphene" in the patent literature.

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Nanoelectronics: Meet Printed Electronics

Posted by J. Steven Rutt on Posted in Electronic Devices; General

Because the NNI is at its ten year mark, much attention is now being focused on where the NNI is going for its next decade (I recently received an email which seemed to beg the reader urgently to send examples of how nanotech funding money has been useful in commerce – for use in a December conference on the subject). The importance of nanotech practical applications – even jobs – is now paramount. Energy and cleantech are important drivers, particularly with the current administration. Bio and medicine will always be important. However, a third arena is electronics. 

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Nanotech Biz Conference: Some Anecdotes and Thoughts

Posted by J. Steven Rutt on Posted in General

Some colleagues and I just returned from the NanoBusiness Alliance’s annual conference in Chicago. We offer some quick thoughts from listening to speakers and pass on some anecdotes:

  1. What is the value of patenting? Should patents only be filed and pursued for actual products? Do they facilitate an exit strategy for a nanotech startup? What to do with existing patents and filings for which the technology is on a "back-burner." These are difficult issues to quantitate. However, one person provided some inside context about a nanotech company that had been purchased by a large, US-based company. The nanotech company was primarily bought for the patents and for blocking others in the market. So persons need to be very careful on valuation issues when they propose to cut spending on patents to only cover existing products.
     
  2. Altair Nanotechnologies: recently in a $50M deal, effectively "sold to China"? Is this how the next several decades will flow?
     

  3. US leadership in nanotech not enough if limited to R&D leadership. Is there anything new here? I lived in Japan in 1992-1993, and recall all the discussions in the 80′s and 90′s about our R&D being economically exploited abroad. One new factor, of course: the emergence of S. Korea and China.

  4. George Thompson, Intel, has some of the most interesting comments on the history of innovation and nanotech in the context of that history. See his web video at the NNI update meeting this summer (www.nano.gov). China and India led the world in GDP before the industrial revolution. Trending now? The invention of the transistor was not an accident: resulted from a methodical planning. Where is our cabinet level "secretary of innovation"?

  5. Congressman Lipinsky: many things "stuck" in the senate, e.g., SBIR/STTR reauthorization! The president’s current budget does not do enough for nanotech. Spending on nanotech is an investment, not a mere cost.

  6. Why can Morton salt charge an 18% premium for salt? IP

  7. When President Clinton first proposed the NNI (National Nanotechnology Initiative), he spoke of technologies which take 20 years or more to develop. So why all the urgency in 2000-2010 to make a "fast buck" on nanotech?

  8. Recently, a march-in right petition was filed to "crack" a Genzyme patent and expand supply of an important drug. The sense is it could succeed which would have a big impact on our Bayh-Dole system.

In any event, these are just a flavor of the many topics at issue at this conference which are critically important in the NNI’s second decade and nanotech’s future. We will continue to monitor these topics.

Marcellus Shale in Pennsylvania: Drilling for Patents and Innovation

Posted by J. Steven Rutt on Posted in Cleantech; EPA; General; Patent

We believe that the Marcellus Shale natural gas developments in western Pennsylvania and nearby regions are incredibly significant to our economy, environment, and future energy policy. One angle is the technology needed to extract the natural gas, and also to protect the environment. For example, "hydrofracking" – a process used to recover the natural gas – has generated environmental concerns. Nevertheless, one cannot ignore valuable natural resources and the inherent drive to improve technology to get at them. Natural gas has become increasingly difficult to recover. New drilling methods have also been developed. Another angle is the complex layering of local, state, and federal policy, law, and business. If Pennsylvania has the resources, will Pennsylvania receive the benefit?

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More on the NNI at the Ten Year Point: Applications!

Posted by J. Steven Rutt on Posted in General

Nature magazine recently reviewed nanotechnology and the NNI at the ten year point, a subject we have been blogging about this past year. Themes include past emphasis on basic research and the applications for the coming decade.

Our September 27, 2010 panel at the NanoBusiness Alliance Conference in Chicago (2 p.m.) will include discussion of these and other points related to nanotech commercialization.

For life sciences and cleantech to bloom, they must include substantial nanotech. Nanotech funding in the NNI is not a "boondoggle" – as some have incorrectly suggested based on short term analysis - but a wise look to the future!  It is an essential element of the recognized triangle including biotech, IT, and nanotech. Better systems will be needed, however, for commercialization and technology transfer.

We hope you can join us and welcome your comments!

Nanotech’s First Decade: Celebration, Innovation, and Patent Metrics

Posted by J. Steven Rutt on Posted in General

Nanotech has come a long way just ten years into our new century. A celebration of the ten year mark is being planned for later this year, December 8-10, in the Washington DC area. What provides the starting point for this ten year period? The (formal) starting of the NNI, apparently, as President Clinton left office, not the new millenium per se. Billions have been spent since on nanotech by the federal government. What is the result? 

Nanotech has resulted, primarily, in significant innovation these past years. From 2000-2009, for example, the federal government has granted over 4,000 nanotech patents (4,138 patents classified under the nanotech 977 number, based on patent searching today). From 1990-1999, that number was only 1,603 – less than half. Nanotech stands ready to allow cleantech and biotech to push further into the unknown and provide new products undreamed of but 60 years ago. Nanotech must not lose its focus: innovation.

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Potential Bombshell in the Making Over Patent March-In Rights ?! Give Us Drugs or Give Us…

Posted by J. Steven Rutt on Posted in General; Licensing; Patent

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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Nanotech Sensors, NDA’s, and Joint Development Risks (The Case of the “Self-Serving” NDA)

Posted by J. Steven Rutt on Posted in Electronic Devices; General; Nano Biotechnology; Patent

We wanted to review a case which we can call the case of the “self-serving” NDA.  Let me explain:

One critical application of nanotechnology is in sensing, whether used for medical diagnostics or cleantech. For example, the NNI has recently produced a fifty page report on nanotech sensing at www.nano.gov (“Report of the National Nanotechnology Initiative Workshop, May 5-7, 2009”). When a sector of nanotechnology, such as sensing, becomes the subject of patent and/or trade secret litigation, this signals that the market for the technology has arrived.

One recent IP litigation has been focused on commercial products for nanotech sensing for glucose monitoring, and an important decision was just rendered. In reading these developments, lessons can be learned with respect to non-disclosure agreements, patent filings, and joint development. Many companies, of course, need to pursue joint development strategies in the real world, and the risks associated with joint development must be managed wisely.

To Read More about the Case of the Self-Serving NDA:

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Pushing the Nanotech Gas Pedal: Molding the NNI

Posted by J. Steven Rutt on Posted in General

Meetings were held recently in the Washington, DC area to discuss revising the National Nanotechnology Initiative (NNI) strategic plan (July 13-14,  www.nano.gov). President Obama’s Office of Science and Technology Policy is also seeking input on nanotechnology’s future (for example, see presentation from Travis Earles at www.nano.gov).  

In these important discussions, nanotech history should not be forgotten. Moreover, the business at hand must be considered. These points were driven home most forcefully by Intel’s George Thompson who, in his 30 min webcast, encouraged the NNI to push the nanotech gas pedal. Now is NOT the time to take your foot off the gas!  More particularly, after ten years of fundamental nanotech research, more attention should be paid to addressing the infamous “valley of death” which engulfs many nanotechnologies.  Important technology topics like reliability and reproduciblity of specific nanotechnologies cannot be ignored in the drive to just publish more science papers.   

Thompson also notes the centrality and importance of intellectual property.  People have to be willing to share their innovations and overcome difficult collaboration issues which IP can generate.

It was good to see government look to history before deciding how to push into the future. Consider: …

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$14 Billion Spent on Nanotech: Now the U.S. Government Wants Your Input—by August 15

Posted by J. Steven Rutt on Posted in General

Did you know the federal government has spent $14 billion on nanotech since 2001 via the NNI?  As noted recently by InformationWeek, the government (OSTP) now wants to hear your ideas on how best to push into the future with nanotech. OSTP expresses particular interest in how nanotech can facilitate cleantech, while at the same time we also manage environmental, health, and safety risks associated with nanotech.

In other words, what’s the best way to spend the next $14 billion?!

Submissions are due 11:59 EDT on August 15, 2010.  Send to NNIStrategy@ostp.gov.

Thanks to Foley’s Antoinette Konski for this alert.

See below for more information.

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Nanotechnology Commercialization Update News

Posted by J. Steven Rutt on Posted in General

Nanotechnology commercialization updates are important in view of the large federal government investment in nanotechnology research (both past and on-going investment). Hence, it is important that the government will soon be meeting to update the National Nanotechnology Initiative (NNI) strategic plan. The topics for this meeting include commercialization and technology transfer. The meeting will be held July 13, 14 at the Hotel Palomar in Arlington, Virginia, and input from the public is being requested. See: http://www.nano.gov. Numerous new developments are emerging which should be considered at this meeting for building new strategies.  For example, …..

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Tech Transfer Debate Brews: Provide More Options for Faculty to License Their Inventions?

Posted by J. Steven Rutt on Posted in General; Licensing

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.

False Marking—Federal Circuit Case Law

Posted by Bruce Wu on Posted in General

The Federal Circuit once capped the penalty for violating the marking at $500 for each action of false marking (no matter how many articles were marked). However, the good old days are now gone. 

As enunciated by the Federal Circuit in The Forest Group, Inc. v. Bon Tool Co., __ F.3d __ (Fed. Cir. 2009)(Moore, J.) on December 28, 2009, the court interpreted the 1952 amendment of the marking statute to hold that each violation of the marking statute under 35 U.S.C. § 292(a) occurs for each article sold: “Whoever marks … any unpatented article [with] the word ‘patent’… for the purpose of deceiving the public . . . shall be fined not more than $500 for every such offense.”

Now, $500/article…that can be a lot of money!

Connecting Nanotechnology, the Economy, and IP Law – Part 2

Posted by Barry S. Wilson on Posted in General

As government stimulus money makes its rounds to the R&D sector, nanotechnology companies are slowly getting their fair share of much needed research grants (for example: see here, here and here). While the influx of fresh cash-on-hand could very well be used to hire from the pool of surplus researchers left in the wake of layoffs, companies may need to take appropriate steps to further protect their IP interests. Companies must therefore ensure that tools such as non-compete and non-disclosure agreements are enforced in order to limit the chance that a new employee (or former-employee’s) unintentionally, but inappropriately divulges trade-secrets. 

In instances where new research or joint development opportunities arise, companies should also consider additional measures when the possibility exists that employees share knowledge with collaborators, or unknowingly divulge trade secrets to the new employee about similar technologies acquired while with their former employer.  

Recently, Foley & Lardner attorney Steven Rutt, PhD, gave a talk at the inaugural conference of  the American Society for Nanomedicine in Potomac, Md. As part of his talk, Dr. Rutt presented strategies for companies considering new joint development ventures. Some of these strategies include:

  • Avoid ambiguous "boundaries" in the scope of work
  • Inventory trade secrets ahead of time; consider provisional filings
  • Limit the technical field with caution, as some limitations may not be amended later
  • Limit the personnel involved; consider a single person as a controller but be cautious when one person works on multiple projects
  • Limit importation of new technology
  • Limit duration of joint development
  • Define technology to be developed
  • Define exit plans including ownership

Connecting Nanotechnology, the Economy, and IP Law – Part 1

Posted by Barry S. Wilson on Posted in General

During a down economy, many nanotechnology companies rely heavily on government grants as the influx of funds from private investors decreseases.  As a result, these companies become particularly sensitive to IP disputes since many grants place limits on the use of funds to subsidize legal costs.  In some cases, nanotechnology companies may risk bankruptcy if issues dealling with  trade secret misappropriation, determintation of joint or sole inventorship, and breach of joint development agreements lead to litigation battles.  Thus, stemming from the highly collaborative nature between many nanotech startups, universities, private laboratories, and their respective researchers, these entities must takes steps to ensure that their IP interests are protected throughout the R&D process, especially at the front-end. 

In a recent article published in Nanotechnology Law and Business, Foley & Lardner attorneys Reed Christansen, Stephen Maebius, Leon Radomsky, and Steve Rutt, PhD provide examples of nanotechnology companies seeking bankruptcy protection as a result of intellectual property litigation.  The authors also summarize steps that nanotech companies can take to protect themselves and to forestall litigation.   

President Obama Met With the Presidents of MIT

Posted by Bruce Wu on Posted in Cleantech; General; Nano Biotechnology

At the end of March, MIT President Susan Hockfield met with President Obama at the White House to discuss funding for clean-energy technologies.

This news came just a few weeks after MIT researchers reported that they had developed technology that could enable lithium-ion batteries to charge in seconds instead of hours. They’re hoping the advance could lead to smaller, faster-charging batteries that could be used in cell phones and other devices. Another MIT research team, led by Dr. Angela Belcher also reported that they’ have combined nanotechnology with genetically engineered viruses to build batteries that could power hybrid cars and cell phones. 

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A “Nanotech” and/or a “Clean Tech” Revolution?!

Posted by Bruce Wu on Posted in Cleantech; General

By J. Steven Rutt[1] & Bruce Wu[2]
Foley & Lardner, L.L.P., Nanotechnology Industry Team

A Book Review:
The Clean Tech Revolution: The Next Big Growth and Investment Opportunity
– By Ron Pernick and Clint Wilder (Collins, 2007)

 “Nanotechnology and clean tech are in many ways a natural fit. Many of the large corporations that are active in clean tech are also active in nanotech. Nanotech could end up enabling many next-generation clean technologies such as advanced batteries, water-desalination and water-filtration membranes, building insulation, and of course, solar power.” The Clean Tech Revolution, pg. 46.

“Before his death from cancer in 2005 at age 62, [Richard E.] Smalley and his team came up with a list of the 10 greatest challenges facing humanity. At the top of the list were energy and water, ….The scientists understood that energy and water stood at the base of many of the other challenges. … The [I]nstitute [for Nanoscale Science and Technology], under Smalley’s guidance, decided to focus a good deal of its efforts on the intersection of energy and nanotechnology…” The Clean Tech Revolution, pg. 167. 
 

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A Case Study: A Comparative View of Nanotech Patents In Japan and the US

Posted by Bruce Wu on Posted in General; International IP Issues; Patent

The patent landscape in the United States has changed dramatically since the U.S. Supreme Court’s decision in KSR in 2007.  Some have argued that the bar to overcome the obviousness rejections have become higher in the United States and as a consequence, it has become more difficult and taken longer for a patent to be granted.  However, to our knowledge, limited data have shown how the patent granting process has been affected since KSR in the United States, in comparison with other countries, such as Japan.  Statistics suggested that there are disparities between the grant approval rate on similar patents filed at United States and Japanese patent offices.

 

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Nanotech and Food

Posted by Bruce Wu on Posted in General

A recent United Kingdom article indicates that nanotech can also be applied to the food industries, including improving packaging and/or enhancing crop growth.  According to the article, with respect to food packaging, the use of nanotech may help preserve essential nutrients such as vitamins. 

Indeed, with such a broad spectrum of potential applications, it should not be surprising to one that nanotechnology can be valuable in the food industries.  However, one big hurdle that the nanotech scientists will have to overcome is to convince the consumers and the government regulatory officials alike such that they will also share the scientists’ optimistic view.

The article can be found here: http://www.guardian.co.uk/science/2009/feb/08/nanotechnology-food-shelf-life.

Stimulus Package and Nanotech?

Posted by Bruce Wu on Posted in General

Comments by Steve Rutt

Three cheers to Thomas Friedman for noting the merits of investing in nanotech, cleantech, and other high technologies in his February 21, 2009 column. Friedman argues, in essence, that stimulus money is better spent for high technology start-ups rather than "giant wealth-destruction machines." 

The readers are referred to the article here.