I saw this recent article on the “nanotechnology patent jungle.” The article refers to another recent article on the subject of making nanotechnology research “open-source.” Patent jungles are all around us; the concept is not unique to nanotechnology, and it is important to establish what exactly is a jungle (do you need five or a 100 patents to create a jungle?). Some might call it good business planning when a company elects to try and create a patent jungle against competitors. Indeed, it takes but a single company to create a substantial jungle with a strong patent filing program coupled to R&D. In some cases, one is forced to “take a license” because it seemingly is cheaper to license than to study all the patents with the help of competent legal counsel. Competent legal counsel is needed to really study the impact of a perceived jungle (there might not really be a jungle – just a scare of a possible jungle).
I suspect that in the history of technological development for material things, there are many more examples where important technology is subjected to a lot of patenting, compared to examples where important technology is NOT subjected to much patenting. If you work in patenting long enough, you start seeing the concept of patent jungles being applied to multiple technology sectors (I can, for example, recall hearing about patent jungles with single site polyolefin catalysis or “metallocenes” in the 1990′s).
In a nutshell, the global patent system, as of 2013, has evolved to where one should quickly file patent applications to protect your technology (even the US is moving to a first-to-file system on March 16, 2013 which suggests a need for fast filing). Then, in the shorter and longer term, one should update on-going reviews for freedom-to-operate in the space of your invention, as part of a larger commercialization strategy. Patent jungles are not unique to nanotechnology and one should do IP due diligence as part of commercial investment. Nothing too new or unique here, although this is a more interesting discussion when focused on particular aspects of nanotechnology such as graphene or carbon nanotubes.
One can try to do business in sectors of the economy which are not directly based on technological development, but if you want to work in a sector for which technology innovation is essential for success, then one cannot ignore the patent system, or alternatively, one cannot wish the patent system would go away.
I do believe government policy makers should monitor patenting and its impact throughout the economy, including nanotechnology. Such past monitoring helped create the drive for patent reform and the move to a first-to-file system in the U.S.
We confirm that a nanotechnology patent filing explosion continues at a record pace in 2012 as we enter the final trimester of the year. On July 8, 2012, we reported that the USPTO was on pace to publish a record number of class 977 nanotechnology patent applications (over 4,000). This was also noted in past postings and reflects a solid trend. We checked again today and confirm that the current projection to end of the year remains at over 4,000 (4,043). The broad variety of technology in the filings is startling and in places unconventional. For example, US Patent Publication 2012/0221268 (the last application to publish) relates to quantum computing and lists Microsoft as assignee. Hydraulic fracturing is increasingly referred to in this body of patent literature as there are 16 such publications this year which is double the number compared to the prior three years combined (e.g., Halliburton’s US Patent Publication 2012/0220504).
Hopefully, as many of these patent filings as possible will serve useful commercial purposes and facilitate investment from the private sector as well as from government. The licensing of these patent filings can be analyzed for use in policy formulation and business development. Certainly, the on-going miniaturization of electronic devices – a hot patent topic these days with the Apple v. Samsung developments - will require more developments in nanotechnology including, for example, better batteries, power management, semiconductors, and displays. Clearly, many of the patent filings find applications related to energy, electronics, and bio nanotechnology.
In addition, hopefully the quality of filings remains solid despite the pressures to file applications. Finally, (hopefully!), patent reform will function to improve the patent system and encourage investment, particularly as it applies to nanotechnology inventions.
Foley’s annual Cleantech Energy Patent Landscape Report provides an analysis of the top clean energy technologies patented in the United States to aid industry executives, start-ups, individual inventors, and investors in identifying trends and market opportunities in this continually changing landscape.
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 firstname.lastname@example.org.
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.
The Department of Energy has announced a new initiative, “America’s Top Energy Innovator”. The gist is an applicant can get a “price break” and less “red tape” in licensing patents from the federal government which are not currently licensed, focusing on start-ups. The program begins May 2, 2011 and apparently will have a cut-off date of December 15, 2011
In particular, the goal seems to be to make it easier for start-up companies to license. Critical issues over the value and costs of exclusive versus non-exclusive licensing were not noted.
Continue reading this entry
A new report just issued which, in 129 pages, provides the latest analysis and commentary on university patenting and technology transfer under the Bayh-Dole Act.
The report is generally positive about the Bayh-Dole Act, now about 30 years old, and confirms that most do not want to return to the pre-1980 era. The report did not get into much specificity with respect to nanotechnology or cleantech, but the report is very important to these fields. The NNI ten year anniversary is here, and NNI strategy for its second decade is crucial.
Ironically, Allen J. Bard (University of Texas) also recently provided a guest editorial to C&EN (October 11, 2010) in which he expressed concern that young people may not want to become university professors if the university pushes them to generate IP and funding through IP. Per Bard, money has become too important at the university, and use of patents to generate funding is part of the problem (and a growing part).
The report, prepared by the National Research Council, can be downloaded at: http://nap.edu/catalog.php?record_id=13001
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.