The final phases of U.S. patent reform become active on March 16, 2013 when the U.S. patent system switches to a “first-to-file” system. The USPTO has to date only issued draft guidance on this switch. Hopefully, they will issue final guidelines soon so patent applicants can adapt well to the new regime, particularly if the final guidelines differ from the draft guidelines issued last August 2012. Many patent applicants will want to consider filing applications before March 16, 2013 if appropriate to avoid the new law. In some cases, split parallel filings, rather than a single filing, may be a good call. Hence, planning should have started by now.
While patent reform impacts all technologies, not just nanotechnology and clean technology, the patent filing rates in these sectors are rising, so attention to patent reform is particularly needed in these sectors.
Finally, March 16 is a Saturday so it would be very good to have all the ducks lined up on or before March 15, 2013 !
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.”
Media reports re A123 System’s bankruptcy confirm that A123′s intellectual property is an important part throughout the lifecycle of a struggling company. While Johnson Controls was an initial suitor for A123′s assets, the Wanxiang Group is also now inserting itself into the bankruptcy proceeding. However, concern is present that the IP could “go to China.”
In any event, stay tuned. Emerging growth companies should recognize the value of IP thoughout corporate lifecycles, including bankruptcy. In the on-going debate about whether to file patent applications in China, the debaters should note key situations such as this A123 situation where Chinese companies and investors are critical factors.
W.L. Gore & Associates, Inc. is now petitioning to the Supreme Court over a long-running case involving joint inventorship law. In an era of collaborative research, joint inventorship law continues to be a critical aspect of groups and individuals communicating with each other over technology innovation. The technology behind the patent issue is the Gore-Tex(R) expanded polytetrafluoroethylene advanced material and its microsctructure. Gore argues, briefly, in its policy aspects that the Supreme Court must intervene to avoid chilling collaborative research and harming academic research, including research which is part of the Bayh-Dole system. Important, interesting reading.
Miracles of nature and science are all around us, and one of them is the abilty of an organism to heal itself. If skin is cut, the skin can repair itself. Can that concept also be applied to synthetic materials and coatings? One company trying to commercialize the concept is Autonomic Materials, Inc. (AMI). In the AMI approach, microcapsules are used. AMI recently announced it completed a series B financing, with Phoenix Venture Partners investing. In these tougher economic times, including tough times for venture capital, AMI’s receipt of investment is good news. More about Phoenix Venture Partners can be found in attached link.
We continue to monitor patent literature for water and liquid treatment technologies related to hydraulic fracturing (see our October 7, 2012 blog entry, for example). We did not see as many granted patents in 2010 and 2011 compared to 2012 (likely a trend reflecting the increased importance of hydraulic fracturing in recent years). One exception was US Patent No. 7,722,770 granted May 25, 2010 (the listed assignee is Anticline Disposal, LLC). Anticline now has five granted patents, best we can tell (8,105,488; 7,722,770; 7,628,919; 7,527,736; and 7,510,656). The processes appear to link to nanotechnology via nanofiltration and reverse osmosis. See also this link. Nanotechnology continues to be a prominent theme in new hydraulic fracturing technologies although many of these nano-HF patent filings are not included in the 977 nanotechnology patent class.
For the Anticline ’770 patent, the abstract indicates:
ABSTRACT: Systems and methods have been developed for treating the waste water contaminated with methanol and boron in addition to other contaminants. The systems and methods allow specifically for the removal of the methanol and boron without the addition of significant chemicals to raise the pH. The water is treated by removing the methanol via biological digestion in a bioreactor, separating a majority of the contaminants from the water by reverse osmosis and removing the boron that passes through the reverse osmosis system with a boron-removing ion exchange resin.
Good to see: high throughput, inexpensive DNA sequencing is being featured on NPR this week in a series entitled the $1,000 Genome. Many of the technologies for this revolution in sequencing, of course, relate closing to or directly are nanotechnology (e.g., nanopore, microfluidic, and/or lab-on-a-chip technologies). Personalized medicine depends on it. More generally, the interface between biology and electronics is one of the most compelling arguments for further development and commercialization of nanotechnology and, more particularly, bio nanotechnology. Another leading example is allowing partially blind or blind persons to see better with artificial retinas.
A brief check of the nanotechnology class 977 patent literature shows IBM has activity in this area. See, for example, their recent US patent publications 2012/0199483 (published August 9, 2012); 2012/0193237 (published August 2, 2012); 2011/0308949 (December 22, 2011); and 2011/0279125 (November 17, 2011).
Hopefully, angel and venture capital investment will also flow to these exciting areas. This appears to be turning out to be one of many virtually secret “killer apps” for nanotech. For example, the NPR series does not delve too much into how the sequencing is done (per the series, sequencing done in a ”black box”). Hopefully, despite the secrecy, the federal and state governments, including those who fund and run the NNI, are watching.
The September 2012 major leage baseball pennant races are in high gear. I checked to see if baseball is by chance appearing in the nanotechnology patent literature. Apparently, the leading example is for better composite baseball bats. Some years ago, Easton had developed a Stealth CNT baseball bat (CNT, carbon nanotube). Zyvex contributed nanotechnology to the effort. This embedded link has some updated commentary on wooden, aluminum, and composite bats. Interesting how these can become “regulated” markets – need to protect the pitchers from rocket line drives off the bats. Also, perception exists that better bats would be some sort of undesirable performance enhancer. Some MLB teams, however, clearly need a lot more that advanced technology bats to make the playoffs and justify spending on the ticket prices.
Good to see advanced manufacturing and nanotechnology in the popular press again (see link). This was the lead, front page article in Sunday’s forum section of the newspaper I read … bought an “old-fashioned” hard copy to read it!
The 11th Annual Nanobusines Conference will be held September 4-6, 2012 in Boston, in conjunction with the Nanomanufacturing Summit.
We are planning a session on patenting and important updates with patent reform. Last year’s panel provided for a lively conversation as the new patent law was reviewed. Now, new developments have surfaced one year later as critical regulations are being implimented. We hope you can attend.
The National Venture Capital Association (NVCA) is participating in a statement responsive to the “No More Solyndras Act.” The gist is to not “throw the baby out with the bathwater” in “fixing” the government programs that led to the Solyndra problems.
NVCA also reports life sciences investing (biotech and medical devices) was down in Q2, the fourth quarter in a row for decline (see press release on home page for nvca re Q2).
In comparison with life sciences, cleantech was modestly up and featured some of the largest deals in Q2, falling within the “Industrial/Energy” group, including investment deals with Fisker Automotive, Bloom Energy, Harvest Power, and SunRun, Inc. Clean technology is said to cross industries – remains a bit of a mystery what is an industry versus a sector – distinction without difference? Many technologies cross industries. Just explain why a particular classification system is chosen. For many years, it has been said that ”nanotechnology is not an industry,” but I am not sure what is the point of saying that as many things seem to not be industries (e.g., cleantech)? Have not heard a good explanation despite asking a number of persons who make the point.
Also, good to see the Wall Street Journal provide a nanotechnology commercialization story recently. A nanotechnology renaissance could be, indeed, a boom to the economy if the government and venture capitalists can figure out a better model for investing in the physical sciences.
The OSTP has recently posted a report on advanced manufacturing, which identifies eleven “cross-cutting” technologies. Of these, no. 5 is nanomanufacturing and half of the others directly relate to nanotech (e.g., advanced sensing, advanced materials, biomanufacturing, robotics, flexible electronics). The report is about 70 pages long.
Last week, it was exciting to prepare a talk on new developments in nanotechnology for the USPTO. Leading the list of exciting sub-topics was how nanotech is being used for revolutionary fast DNA sequencing, a core aspect of personalized medicine. Recent 977 nanotech patent publications focus on nanopore technology, for example. Semiconductor processing is also being used to integrate with nucleic acid sequencing in revolutionary ways, bringing down the amount of time and money needed for sequencing. Nanotech has always been looking for its “killer app” – fast DNA sequencing could be it for the second decade of the NNI. Time to increase the publicity surrounding this revolution and its source in nanotech.
The NNI is now presenting to the public a new signature initiative devoted to sensors. Two thrusts are identified: (1) use of nanotechnology in building sensors, and (2) develop better sensing methods for detecting nanomaterials. An associated white paper provides more details.
This is the fifth signature initiative from the NNI. According to the announcement, past sensor work has been held back due to problems with lack of reliability, reproducibility, and robustness. Sensors apply to a broad spectrum of industries, including energy, health, and defense. Certainly, after 9-11, sensors were identified as a key technology associated with homeland defense. Hence, federal thrusts in this sector would seem to make sense.
Some references to commercialization are present. For example, the announcement refers to US Patent No. 7,889,954 as an example of the type of technology upon which they want to build (from the Sailor group at University of San Diego). However, as if often the case with the federal government announcements, the commercialization issues at stake lack detail. For example, no patent studies are noted as part of what is important commercially in work to date. No analysis of the Bayh-Dole system in this sector or of the history of licensing or venture funding for sensor technology is noted. Brief reference to nanomanufacturing is noted (nanomanufacturing is another NNI signature initiative).
The ’954 patent, according to PTO records, is assigned to University of California and the federal government, jointly. Federal money apparently was used to develop the invention. The patent abstract for this patent is below:
An embodiment of the invention is a remote sensor that has an optical fiber terminating in a tip. A thin film porous particle having a characteristic optical response that changes in the presence of an analyte is optically coupled and physically attached to the tip of the optical fiber. The optical response of the particle changes in the presence of analyte, and the particle also serves to concentrate analyte. The thin film porous particle can be functionalized toward sensitivity for a predetermined analyte or analytes. A method of remote sensing exposes the remote sensor to an environment to be monitored for analyte. The thin film porous particle is probed with a beam of light. Reflected light is monitored through the optical fiber for a shift in frequency or intensity.
The USPTO has now in 2012, as of July 5, published 2,137 patent applications falling within the nanotech 977 classification. If that publication rate continues, 2012 will be another record year for nanotech patent application publishing at the USPTO. Aproximately 4,000 will publish this year if the trend continues. Last year, a record 3,439 nanotech 977 applications were published, so an explosively rapid rise is present.
Recently, I was invited to talk to the USPTO about nanotechnology later in July as part of the USPTO’s efforts to train examiners. With all of this nanotechnology patenting effort, clearly we will have a lot to talk about. If readers are interested in working with the PTO on giving talks on technology, please let us know.
The popular news webpage msnbc.com is featuring an article in their health section on bio nanotechnology with headline, “Gene healing in a lotion? Researchers say they’re close.” Northwestern University research is highlighted, coming from the laboratories of Professor Chad Mirkin.
The technology, as you can read, relates to siRNA methods. This an active area of nanotechnology with potentially blockbuster results to impress the public mind (revolution, not evolution). For example, I noted that terms like siRNA, RNAi, and miRNA appear in 3.4% of the class 977 patent publications published to date (440 out of 12,982). Also, a review article including IP and interference technologies and nanobio has been posted on the web.
Have been reading the 2011 book, Bottled Lightning, Superbatteries, Electric Cars, and the New Lithium Economy, by Seth Fletcher. An excellent read for anyone interested in cleantech and nanotech commercialization. The focus is on the lithium ion battery and its scientific, engineering, and manufacturing history. Also, its application to the electric car. The need for high energy density batteries at good cost is a fundamental challenge for nanotechnology (e.g., development nanophosphate battery packs). High surface area is a key parameter directly linked to nanotechnology. The book also draws attention to patent and licensing issues which was interesting. Much bang-for-the buck in this 215 page paperback – enjoy! Here is one public review.
Also, was at the US PTO Cleantech Customer Partnership Meeting this week. In the technical presentation, focus was more on wind and solar.
However, advanced batteries continue to be a critical aspect for cleantech and one of its flagship products, the electric car.
Today, a fresh crop of 102 nanotech class 977 patent publications were published at the US PTO. The total now for 2012 is 1,249, which projects to the end of the year to be 3,608. If this continues through 2012, it will be another record year for publishing nanotech 977 patent applications. The numbers go up each year: last year 2011 was 3,439; the year before 2,770 (2010); and before than 1,499 (2009). Hence, the number has more than doubled in but two years.
The 977 nanotech patent applications cover the gamut of nanotech commercial application spaces including personalized medicine, cleantech, defense, semiconductors, and the like. See, for example, US Pat. Pub. 2012/0088235 published April 12, 2012 for rapid DNA sequencing, which is critical to personalized medicine.
Hopefully, government is working with venture capital on how best to adapt the investment systems for commercializing nanotech innovations (e.g., technology transfer from universities and federal labs, including the Bayh-Dole system). Otherwise, many opportunities will be wasted.