Another “march-in petition” has been filed recently as part of the on-going implementation of the Bayh-Dole system. The attached web page provides access to the petition, cover letter, and broader context. Now, several groups are seeking march-in against a series of AIDS/HIV related drug patents. Funding for the underlying inventions was provided by the NIH.
No march-in petition has ever been granted during the 32 years of the Bayh-Dole system. If one were granted, the grant would likely have a major impact on the Bayh-Dole system, extending beyond the particular case at hand. Best I can tell, the last march-in petition was filed about two years ago, but the petition failed (see our prior blog entry).
Review of the patent literature confirms that many nanotechnology and clean tech inventions arise from federal funding and invoke the Bayh-Dole system. Funding comes from the NNI and Department of Energy, for example. However, it is not unusual to find investors and executives in these areas to be relatively unaware of the Bayh-Dole system and its legal implications.
I will note briefly that I found the petition dialog interesting for attempting to legally separate out what appears to be (1) a primary use of the patented invention, from (2) secondary uses of the patented invention, or what is called a “dependent technology.”
This year is the ten year anniversary for a leading nanotechnology conference, the Nanotechnology for Defense Conference (NT4D). The call for abstracts indicates a February 18, 2012 initial deadline. The conference will be held August 6-10 in Summerlin, Nevada.
Defense is one of the fundamental and perhaps the most stable pillar for nanotechnology commercialization, along with other pillars such as bio nanotechnology and energy. The history of the Department of Defense’s (DoD) interest in nanotechnology is noted in the Foreward of Ratner and Ratner’s book, Nanotechnology and Homeland Security, 2004 (written by James Murday, Office of Naval Research). The DoD interest in nanotechnology can be “clearly identified as early as the late 1970′s when its Ultrasubmicron Electronics Research (USER) program.” The DoD had a long history for research in the miniaturization of electronics. Early efforts focused on 2 nm structures and led to superlattice technologies. Programs in the 1980′s sought to exploit new tools like STM and AFM. In the 1990′s, DARPA initiated an ULTRA program for ultra fast, ultra dense electronics program. In addition, the Office of Naval Research began a program in nanostructured coatings. By 1997, the importance of nanotechnology to the DOD led to its designation as a “strategic research area.” When the NNI was created in 2001, the DoD wan an “enthusiastic supporter.”
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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.
For those interested in monitoring state government work with cleantech, a useful resource is www.progressivestatesnetwork.org. For example, a 2010 summary of cleantech efforts in job creation can be found at http://www.progressivestates.org/node/24464.
We were pleased to see the emphasis on technology transfer and partnering.
Also, one can easily pick out updates for the particular states one might have particular interest in.
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.