This issue of NanoNews-Now covers Nanotechnology Patenting Issues. Editor Rocky Rawstern interviews nine university technology transfer officials on issues surrounding the patenting process.

Also included is an excerpt from Current Intellectual Property Issues in Nanotechnology, by Terry K. Tullis.

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Rocky Rawstern - Editor Nanotechnology Now -
Rocky Rawstern
Editor, Nanotechnology Now

Nanotechnology Patenting Issues

Charles Rancourt and Peter Pritchard, Rensselaer Polytechnic Institute

Oren Livne, University of California, Santa Barbara

James A. Poulos III, University of Maryland

Troy Coyle, University of Wollongong

Neil Iscoe, University of Texas at Austin

Larrell Walters, University of Dayton

Brian Graves, University of Texas at Austin

William Decker, University of Dayton

Norma Dunipace, Lawrence Livermore National Laboratory

Excerpt from: Current Intellectual Property Issues in Nanotechnology

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Charles F. Rancourt - Rensselaer Polytechnic Institute
Charles F. Rancourt Director, Office of Technology Commercialization, Rensselaer Polytechnic Institute.

Peter Pritchard - Rensselaer Polytechnic Institute
Peter Pritchard, Program Manager - Nanoelectronics. Office of Technology Commercialization, Rensselaer Polytechnic Institute

NN: What key points would you emphasize to the business community regarding the technology transfer process?

CR: If you look at the process of Technology Transfer, what really helps in terms of building the relationship with a potential business partner is a good exchange of information between the parties; whether it be about the technology or about the market space the business partner is looking at. So from our standpoint a really important point here associated with this process is a good exchange, which needs to be ongoing throughout the relationship of information about the technology and the market place.

PP: One point that I would add regarding the tech transfer function specifically is that we many times act as (a) bridge between a company with their business and the scientific community. (For) the people in the University doing the research we act as a liaison, and normally we have background in both of those areas to be able to connect the two.

NN: What advice would you give a business wanting license your patents?

CR: The main condition that we want to see from a business that wants to license a technology is that they truly be committed to the commercialization process. We want to build a partnership with someone who will work and put in the investment of work to make it happen. We don't necessarily want to just simply license a technology to someone who is going to put it on the shelf. So what we would want in this (continuing on our discussion from question number 1) is communicating information about the progress so their commercial plan - and the progress toward that commercialization plan - we would exchange the same as relative to that technology. If we are considering a partner for licensing what we want from this business partner is really a commitment to the commercialization process.

NN: Prior to working with a business to develop a new technology, what questions must you answer? Patent rights? Mutually defined (and agreed upon) definitions of success? Critical path to success? Stock distribution? Funding opportunities? Other?

CR: We need good definition about the technology itself. Defining what "it" is is putting the boundaries around the technology, we need to make sure that we've got that defined, and also that we are able to protect it. That is really our very first question. Definition of "it," and second our ability to protect "it." Once we do that, the challenge that we have - and this ties in with the next question a little bit - the challenge is to identify the applications or uses for the technology; we now have defined what we've got - the question is how can we use it. That's not a trivial question and that requires a lot of work on our part. Once we get the sum answer of that, then we can define who are the potential business partners in that market space. And then we would want to understand the nature, or their profile; we would like to know do they have the resources to commit to commercialization, do they have a track record, what is their own intellectual property portfolio, what's their business team? So there's several other questions that would come into play once we get to that point, but it takes a couple of different steps before we get to that question.

Patent Rights:
One of the early questions they answer.

Mutally defined (and agreed upon) definitions of success:
Once we have identified a potential partner, and we believe that that potential partner is going to have the commitment then we get into the process of what is the proqo here for the license. And every one of those is on a case by case basis; we do look to try to create licensing terms that are enabling success on both parts. The university is not in the business of commercializing technology, so the university relies on good partnerships with companies who do commercializing, so that we could also benefit. When we get into the negotiating phase we want to build in terms that are appropriate, not over-taxing but also not so lenient that they don't address the value of the technology. It becomes a difficult exercise, to come up with the appropriate numbers. It works it's way out through negotiation.

Critical Path to Success:
PP: I think when you deal with Critical Path it really addresses how you use the technology. So it's a mutually developed set of parameters, but it's many times driven more by the commercialization company then it would be from us, but then of course it has to be consistent with what we have. Go back a little bit to the early stage - does it need complimentary processes in order for it to be successful those on the critical path? critical path.

Funding opportunities:
PP: Sometimes the technology might be in the early stage, (and) there may be a need to develop it further for the specific applications. In that particular circumstance it may make sense for the university to continue working on a funded opportunity, a funded research like opportunity where there are collaborations happening on the research side to further the technology for the specific use. So yes, those are possibilities and sometimes they do come into play.

NN: What are some of the hurdles in the way of commercialization of technologies discovered by universities?

CR: We typically work with early stage technology coming out of basic research. That's the usual scenario, so therefore that is the hurdle of getting the technology closer to the stage of commercialization. That's where the business partner plays a role, and certainly an important role. One hurdle is what we call the gap between laboratory results and commercial product and commercial readiness. Along the same lines is the fact that it exists and the fact that pathway of working through the conversion of technology into a product - that is clearly a hurdle. We are developing technology where we think we have some sense of where it may be applied, but its not always clear. So converting a technology to a product is a hurdle. The two thoughts are both closely related.

PP: To add onto that: some of the basic work which is happening in our basic nanotechnology research is because of the nature of it changing some basic understanding or fundamental understanding of the materials or devices that makes it even more challenging to identify specifically how to use it and how to best review the value proposition of it that the material may bring.

NN: Tell us about a few of the most interesting patents that your university has co-developed with a company.

CR: One is with a company called Applied Nanoworks. See the press release that the company made in December of 2003. (link)

PP: Applied Nanoworks is a start up company. They are focusing on commercializing a couple of technologies developed on campus as it relates to nanotechnology. Specifically, nanocrystal and quantum dot technology - they've worked out a process and we've worked out a process in order to make it easier and to tune into this material. Applied Nanoworks has licensed these two technologies. The inventor (on campus) is also involved in the start up company, and we helped team him up with the president of the company who is a local entrepreneur. They're making a go at it with a couple of products based on a couple of market spaces.

NN: What types of businesses are most likely to use it?

PP: Depends on the marketplace they are going for. One particular application space is in the semicondutor world where they do mechanical polishing. I think there are a couple of longer term plays, so their business plan calls for both revenue now in a direct space which is directly usable. And also in developing in major chemical companies further developments and capabilities for these kinds of materials.

NN: Can you talk a bit about any patents pending that you would like the business community to know about?

CR: I am sending you two links (1); the first relates to the last question and the second has to do with this question. We have some work going on with a professor here in Materials Engineering who has come up with some very interesting technology that has to do with carbon nanotubes.

PP: He is a well-known carbon nanotube scientist, and was at the research lab in 1991 when carbon nanotubes were discovered in Japan. He has spent (time) in various locations perfecting techniques, controlling and characterizing, and actually working a lot with our other scientists on campus to develop specific ways in which these structures can be utilized and various application spaces.

NN: If you could, would you change anything about the patent process?

CR: I think that's a big question. The patent office is getting full and is experiencing tremendous volumes of applications. They have had significant growth. They have needs to grow their examiner base. They have a lot of challenges ahead of them, so it's hard to say. It's a matter of the patent office becoming able to absorb all these changes in terms of growth in technology and the variety of technologies. I've heard people say "nanotechnology, what classification is that?" so there's some real issues that the patent office has to deal with as we get into variety - especially nanotechnology - since it cuts across such a large spectrum.

(1) Related to questions 5 & 6: link
Related to question 7: link

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Oren Livne Patent Manager, University of California, Santa Barbara.

Mr. Livne directly oversees more than 25% of the campus' inventions and indirectly monitors the rest. He is a registered patent agent with a background in chemical engineering.

NN: What key points would you emphasize to the business community regarding the technology transfer process?

Relationships are a critical component. Technology transfer can be very complicated and time consuming, and having a mutual understanding helps to smooth out the process. We at UCSB have relationships with companies that often span many years, involve sponsoring research in our laboratories, licensing the resulting inventions, and sometimes hiring our students when they graduate. Through these various interactions we are able to develop a sense of trust that makes the technology transfer process much easier.

NN: What advice would you give a business wanting license your patents?

Talk to us. If we are able to understand what a company's needs are, we can often find university researchers or technologies in that area. If a company already has a specific patent of interest, we can work with them to get the license they need in a way that meets the sometimes complex policy guidelines of a public university.

NN: Prior to working with a business to develop a new technology, what questions must you answer? Patent rights? Mutually defined (and agreed upon) definitions of success? Critical path to success? Stock distribution? Funding opportunities? Other?

One of our main missions is to see the technologies developed at UCSB out and in use by the public, so it is very important for us to know that a company has the resources and motivation to make this happen. In our agreements we like to see a development timeline to ensure that focus stays on our invention. Other questions vary based on the situation specifics - will additional development work occur on campus? Who will fund the new work? For how long will the funding company have the right to license any newly developed inventions?

NN: What are some of the hurdles in the way of commercialization of technologies discovered by universities?

Our inventions are often very early stage and with a research and education mission, we are not always in a position to push development to a point were a company can look at a product and say, yes, I'd like to license that. In some cases, research-minded companies will step in to complete the development work. In others, our inventors, who are very entrepreneurial, will start companies to help fill the gap.

NN: Tell us about a few of the most interesting patents that your university has co-developed with a company.

We've had quite a few startup success stories involving our patents and researchers. Agility Communications is one - a 1990 UCSB patent led to the launch in 1998 of Agility Communications ( The company's breakthrough in widely tunable lasers allows one laser to do what it had taken more than 100 separate devices to do - increasing communications network capacity and lowering costs.

NN: Can you talk a bit about any patents pending that you would like the business community to know about?

UCSB is fortunate to be part of the California Nanosystems Institute - CNSI (see link) so we have a strong commitment in the nano area. Some of our nano-related inventions that I am excited about (and that are still available for licensing) include: a new low-cost, room-temperature, synthetic process that uses spontaneous reactions to create a wide range of high-purity materials for semiconducting, photoconductive, photovoltaic, optoelectronic, and thin film battery applications. (see link for a more detailed summary) a suite of silica and hierarchically ordered material related pending and issued patents for use in everything from armor to adhesives to optoelectronics to catalysts to packaging (see "Methods, compositions, and biomimetic catalysts for in vitro synthesis of silica, polysilsequioxane, polysiloxane, and polymetallo-oxanes" US Patent No. 6,670,438, "Hierarchically ordered porous oxides" US Patent Nos. 6,541,539 and 6,716,378, "Self-healing organosiloxane materials containing reversible and energy-dispersive crosslinking domains" US Patent No. 6,783,709, "Method for the production of macroporous ceramics" US Patent No. 6,228,340, "Confined molecular assembly for mesostructure formation" description here, "improved binding of proteins to substrates and matrices" description here.

On the issued patent side, a few that have sparked interest include: self-assembled quantum dots (see US Patent Nos. 5,614,435 and 6,583,436) and a quantum dot infrared detector and ultrahigh resolution imaging device (see US Patent No. 6,541,788 ); and a modified AFM for precision machining (see US Patent No. 5,831,181).

NN: If you could, would you change anything about the patent process?

Because our technologies are often early stage, we frequently need to make decisions on where to file patents before we are even sure what products might be produced. A worldwide, low-cost, patent would definitely help.

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James A. Poulos III Executive Director of the Office of Technology Commercialization, University of Maryland

Since joining the office, Mr. Poulos has negotiated more than 150 license agreements with commercial entities both within and without the state of Maryland. During his tenure 26 University spin-off companies have been created, including Quantum Photonics (College Park, MD) and Little Optics (Columbia, MD). These two companies have received more than $100 million in venture capital funding. He is a registered patent attorney with career in patent law beginning in 1980 as a self-employed patent researcher. Mr. Poulos has written more than 150 patent applications and has prosecuted at least 1,000 applications. More than 90% of these applications issued into U.S. Patents. From 1991-1998 Mr. Poulos was responsible for the U.S. patent portfolio of the multi-national company Zambon Group S.p.A. (Zambon). Zambon is the largest Italian-owned pharmaceutical company in Italy. Mr. Poulos has prosecuted the patent application of Nobel Laureate, Giulio Natta.

James A. Poulos III  - Executive Director of the Office of Technology Commercialization, University of Maryland

NN: What key points would you emphasize to the business community regarding the technology transfer process?

1) There is a need for large companies (greater than 500 employees) to have better working partnerships with research institutions. I cannot emphasize partnership more. Frequently these companies will request information about an invention or ask our office if we have specific technology and then will refuse to sign confidential disclosure agreements. I call this the large company two-step. To anyone trying to transfer technology, this is a warning sign that such a company wishes to pick your brain (your intellectual property) without regard to the University interest. This is no way to establish the trust required of a partnership. The typical response is, "we may be working on the same thing and do not wish to subject ourselves to a claim that we stole University technology." Every well-written confidentiality agreement makes provisions for such a scenario. If such an issue arises and the company is actually working on the same thing, all the company has to do is show proof they were developing the same thing.

2) We are a public research institution without a medical school. The tech transfer process does not generate tens of millions of dollars for the University. All of our licenses require that the company licensing our technology indemnify the University against patent infringement. Small companies are willing to sign licenses with this provision; large companies generally are not. If the technology is to be transferred, the risk must be shifted to the entity that can most afford to take that risk. And that would be the entity that stands to generate substantial profit, not the entity that is receiving a reasonable royalty and I believe most of the time a royalty less than the industry standard.

NN: What advice would you give a business wanting license your patents?

The purpose of research at a University is to have it used for the public benefit. If the company wishes to practice the invention we will help in any way we can. If the invention is to be suppressed by the company in favor of something else the company would rather develop, or a management change shifts the focus of the company so that the University technology will not be developed then do not enter into a license with the University (or terminate the license with the University). Do not hold University technology hostage. A well-written University license will have performance or time sensitive clauses requiring the company to perform. Hard feelings are generated when the University must send breach letters and then termination letters. More good will is achieved by being upfront with the University.

NN: Prior to working with a business to develop a new technology, what questions must you answer? Patent rights? Mutually defined (and agreed upon) definitions of success? Critical path to success? Stock distribution? Funding opportunities? Other?

Just as a venture capitalist wants to know that it can work with a management team we would want to be certain that the inventors and company officials are comfortable with each other. Does the inventor know that he will not be able to control the direction the invention takes at the company? Is the company aware that if it cannot get along with inventor that the probability of obtaining additional know how from the inventor and making this a success is very low?

Patent rights

We do make it clear that the property developed at the University is owned by the University. This is a rare issue when the company is looking to license something we have in hand. It is a bigger issue when the company desired to fund a development.

Mutually defined (and agreed upon) definitions of success

In any book success would be the sale of products (or the business) returning a reasonable profit to the company and reasonable fees to the University. This is how I count success. And so will a well-run company.

Critical path to success

That is usually company driven. The company is the alleged business expert. We generally are not going to second guess methods of how to get there unless performance or time sensitive clauses are breached.

Stock distribution & Funding opportunities

Usually suggested during negotiations. Generally does not happen. The company is acquiring early stage technology. It requires a substantial capital investment that a board of directors is overseeing and may like to control. It is more likely that the company would hire a grad student from the lab where the technology was developed than to provide follow-on funding. But this is the traditional method of tech transfer at a University and is encouraged.


The company, without too much prompting, should keep the university informed of its progress to commercialization. No news is usually suspect.

NN: What are some of the hurdles in the way of commercialization of technologies discovered by universities?

Some of these are mentioned above: The large company two step; a company obtaining an exclusive position and sitting on the rights.; a lack of follow-on funding. As suggested above, a University technology is an early stage technology. A professor may have developed the algorithms for routing a packet of information securely over the Internet but no black box has been developed to show that to industry. And generally there is no funding and often times a lack of desire to develop such a prototype. It is very hard to license such technology when all you can show is the math and not a device cranking out the result.

NN: Tell us about a few of the most interesting patents that your university has co-developed with a company.

The most interesting patents are actually those developed in conjunction with Federal labs.

  1. The first is a tandem refrigerator developed jointly by the University of Maryland and the Environmental Protection Agency. See U.S. Patent No. 5,406,805. The invention can reliably maintain two or more compartments at desired temperatures.
  2. The second is a patent directed to risk assessment. This patent is co-owned by the University of Maryland and NASA. See U.S. Patent 6,223,143 This is a comprehensive Windows-based software tool for conducting Probabilistic Risk Assessment (PRA). The tool assists the risk analyst in modeling deviations from a system's nominal functions, the timing and likelihood of such deviations, potential consequences and scenarios leading from initial deviations to such consequences. The analysis of these models then helps the analyst in understanding the risks associated with the system by generating quantitative estimates of risk levels, and identifying the most significant contributors. Item Software has licensed this technology. It should be commercially available within months.

NN: What types of businesses are most likely to use it?

The first is anyone who wants to compete against Samsung in the domestic refrigerator market. The second technology should be used by any engineering firm engaged in designing and building large-scale products.

NN: Can you talk a bit about any patents pending that you would like the business community to know about?

An invention just disclosed to us relates to producing a thermoplastic elastomer that is a pure hydrocarbon with optical clarity in a living system at low temperatures. A second newly filed application relates to the regulation of anti-inflammatory cytokines that could be used to relieve the pain associated with autoimmune disease. And a third is directed to a glycoprotein-based senor for pathogen detection.

NN: If you could, would you change anything about the patent process?

I have more than one suggestion.

1) In part, tech transfer from the University perspective is a success in the United States because of the grace period afforded under the U.S. patent laws. Meaning one can still obtain a US patent after the disclosure or sale of a product embodying the invention in the US if a patent application is filed within the twelve months of the sale or disclosure. No other industrialized country in the world has such a provision.

There is this great move to harmonize patent practice around the world. That would be well and good if best practices are adopted. Harmonization should include this provision of the U.S. patent statutes.

2) It is no secret that restriction practice (the requirement to pursue a set of claims in one patent application and to forego others unless filed in a second application) at the U.S. Patent and Trademark Office is a money making provision for the PTO. The potential income and the real income derived from this practice leads to abuses by the PTO. There should be more opportunities and less expensive ones to oppose such restriction practice.

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Troy Coyle Manager of Innovation and Commercial Development (Engineering, Science and Law) Office of Technology Commercialization, University of Wollongong, New South Wales, Australia. (BSc (Hons), PhD, MJ, GAICD)

Troy has a background in assisting industry and SMEs to commercialise research. She was a former Client Manager (Biotechnology and Biology) within the Innovation section of AusIndustry, then became the NSW Marketing Manager before becoming the manager of one of the Department of Industry, Tourism and Resources' first regionally-located offices, as Regional Manager, Illawarra and South Coast for AusIndustry. She was also involved in re-engineering of the R&D Start program (formerly the Commonwealth Government's major industry research program) as part of the Prime Minister's Innovation Action Agenda, Backing Australia's Ability. She has held the previous position of R&D Manager for the University of Wollongong and was a NSW Finalist in the 2004 Telstra Business Women Awards (Young Business Woman category). Troy also convenes a local Innovation Network (Bridging the Innovation Gap (BIG) Ideas), which was established through her participation in the NSW Innovation Council's Regional Working Group.

Troy Coyle  - Manager of Innovation and Commercial Development, University of Wollongong

NN: What advice would you give a business wanting license your patents?

That the process will be one of joint evaluation. That the university will operate just like any other business and will assess whether or not the licensee will be able to bring the technology to the markets in which it is seeking a licence. Don't expect a worldwide exclusive licence if you only have operations in one country or are only commercialising in a particular field of application. That being said, universities are probably more collaborative in their business approach and may seek alternative licensing returns, such as commitment to research funding, supply of equipment, access to expertise etc.

NN: Prior to working with a business to develop a new technology, what questions must you answer? Patent rights? Mutually defined (and agreed upon) definitions of success? Critical path to success? Stock distribution? Funding opportunities? Other?

The most fundamental goal that the collaborating parties need to achieve is a mutual understanding of what they expect to gain from the collaboration. This ensures that the relationship is maintained and each party is clear on what is expected of it. Issues that need to be agreed upon include:

  • detailed specifications for the research approach as well as the desired research outcomes;
  • IP ownership and exploitation rights (this will need to consider the best approach to market);
  • what background IP each party will contribute and how this will be dealt with if required for commercialisation of the project outcome;
  • what commercial requirements need to be considered in the R&D process (e.g. size, aesthetics, cost of manufacturing, end-user requirements);
  • timelines and milestones (especially the go/no go stages);
  • how the R&D activities or objectives can be modified (e.g through a joint management committee); and
  • financial and in-kind contribution amounts and dates and whether these are tied to certain milestones.

NN: What are some of the hurdles in the way of commercialization of technologies discovered by universities?

In Australia, Universities lack seed funds to bring products to market and so will often have to attract potential licensees at the late research or early development stage and sometimes before proof of concept. Of course, this is difficult to do because then the partner is effectively acting as a venture capitalist and may be taking a huge investment risk. The other issue is that sometimes research is done using a very academic approach (i.e. the product may be unique and leading edge science) but a prototype or concept may not be market-acceptable and requires input from a commercial partner working in that space.

NN: Tell us about a few of the most interesting patents that your university has co-developed with a company.

Almost all of the technologies that we co-develop with companies are commercial in confidence as a requirement of the commercial partner. However, an example of a technology that we have jointly developed with another Research Institute (Commonwealth Scientific and Industrial Research Organisation- Textile and Fibres Technology) is a "Biomechanical Feedback Device" involving the use of intelligent fabrics to provide immediate feedback on movement and has a diverse range of applications. For example, fabrics are coated with inherently conducting polymers to form strain gauges that can be used as integrated components of clothing and/or items that can be comfortably worn during physical activity and can provide feedback on human motion.

NN: What types of businesses are most likely to use it?

The scope for commercialisation is varied, ranging from training and rehabilitation sleeves for athletes, to application in medical bandaging, to novel toy development.

NN: Can you talk a bit about any patents pending that you would like the business community to know about?

Without giving too much away, areas where we have research programs leading to potential commercial outcomes include:

  • novel ways to purify carbon nanotubes and making CNT biofibres
  • use of nanostructures in novel solar cells
  • use of nanostructures for nerve cell regeneration
  • use of nanostructures in electronic textiles

NN: If you could, would you change anything about the patent process?

There are numerous things I would like to change but if limited to one change, I would like international harmonisation of patent laws. It is very difficult to develop a comprehensive IP Protection Strategy when the rules vary between jurisdictions. For example, first to invent vs first to file issues, assumption of joint tenancy vs assumption of tenancy in common, grace period vs no grace period etc.

[Return to Top of Interviews]

Dr. Neil Iscoe Director, Office of Technology Commercialization, for The University of Texas at Austin.

Neil Iscoe is Director of the Office of Technology Commercialization for The University of Texas at Austin. Neil is an experienced entrepreneur having founded his first technology company, Statcom, in 1979. Prior to his tenure at OTC, Neil was founder and Chairman of Digital Certainty, a firm that provided expertise in technology development strategies, business planning, and technology litigation. Formerly he was founder and CEO of eCertain, a company that sold secure transaction solutions for legal and financial markets.

Neil Iscoe - Director of the Office of Technology Commercialization, University of Texas at Austin

NN: What key points would you emphasize to the business community regarding the technology transfer process?

Our goal is to commercialize technology. We do this by working with potential licensees to structure deals that work for both parties. Deal structure depends on the stage of technology size, the market sector and the type of licensee. Some technologies are more suited for a startup, while other technologies work better for existing large companies.

NN: What advice would you give a business wanting license your patents?

UT Austin has dramatically streamlined the process for commercialization. Companies interested in commercializing our technology should contact us let us know what kind of goals and outcomes they are trying to achieve. We offer exclusive licenses, non-exclusive licenses, and a variety of terms and deal structures that we can fine tune to achieve a mutually beneficial outcome.

NN: Prior to working with a business to develop a new technology, what questions must you answer? Patent rights? Mutually defined (and agreed upon) definitions of success? Critical path to success? Stock distribution? Funding opportunities? Other?

When working with potential licensees, we discuss their commercialization plans and the resources that have available to achieve those goals. When working with a NewCo, we look at their business plan, their management team and the anticipated financing. With an established company, we look at their commercialization plans, their past successes, and their corporate goals and resource allocation.

NN: What are some of the hurdles in the way of commercialization of technologies discovered by universities?

We discover technologies at a very early stage. Oftentimes, it takes a few years and additional development to get the technologies to the point that they can be readily commercialize.

NN: Tell us about a few of the most interesting patents that your university has co-developed with a company.

Molecular Imprints, a company UT Austin founded in 2001, has received $43 Million in out of state investment and $25 Million in government grants. With over 100 employees and rapidly expanding product sales, Molecular Imprints was recently touted by Electrical Engineering Times as one of the "Twenty Most Innovative Technologies 2005" nationally and internationally.

Another UT Austin technology, electronic bio-sensors for medical diagnostics, has been licensed to LabNow. The Texas-based startup has received an initial $14 Million in investment capital and plans to develop a 300,000 square foot manufacturing and development facility that will employ more than 600 Texans within the next five years. LabNow has been cited by BusinessWeek as poised to " in on the $5 Billion global market for point-of-care testing."

NN: Can you talk a bit about any patents pending that you would like the business community to know about?

Nanoparticles to produce novel protein biomaterials
Preparation of a charged tRNA modified with gold nanoparticles for use in the in vitro synthesis of proteins that will in turn be modified with gold nanoparticles. This is a novel way to specifically label proteins. It is also potentially a way to create novel functional nano/bio-materials and to augment protein function in ways that are currently difficult or impossible.

Nanocomposite Membranes for Hydrogen Separations
This invention teaches the addition of metal oxide nanoparticles for substantially increasing overall membrane permeability to gases and vapors.

Uses: 1) more stable, efficient fuel cell membranes 2) cheaper, purer oxygen for medical apps, increased/ cleaner gas separations

A novel method to determine and confirm atomic and molecular structure, to possible nano assembly methods using HRTEM as the "nano crucible." The specimen chamber in the TEM could be modified to introduce agents to actually build complex nanostructures in real time.

Nanoinfusion techniques
A new process to infuse gold nanoparticles into porous materials. Direct applications for the formation of new optoelectronic, optical materials, and encapsulated delivery systems for drug targets.

Photon excitation of materials for the construction of 3D chips, vertical fab, and novel cellular materials for paralysis

Silver nanoparticles for antimicrobial and antiviral applications
Applications include anti AIDS treatment, novel materials, cosmetics, etc.

Uses a NEMS-based drug delivery device to develop micro and nano-carriers that are capable of releasing both drugs and contrast agents in response to stimuli. This novel device not only achieves accurate drug delivery, but it also provides for the simultaneous non-invasive monitoring of both therapeutics and the delivery device.

NN: If you could, would you change anything about the patent process?

Given the resources available, the USPTO does a respectful job. We would like to see a decrease in the fees for non-profits, a reduction in cycle time and a decrease in required fees.

"UT Austin's research and commercialization continue to grow the Texas Economy. By licensing technology to startups in Texas, UT Austin brings out-of-state investment capital and federal commercialization funding to Texas. This results in the creation of direct and indirect jobs that benefit the Texas economy and improve the quality of the Texas workforce."

"UT Austin is rapidly increasing its portfolio of technology companies is committed to growing the Texas economy by commercializing its research into products that benefit society."

[Return to Top of Interviews]

Larrell Walters Director of Technology Partnership UDRI Office for Technology Partnerships, University of Dayton

In this position he is responsible for the administering the University's Intellectual Property Policy, including efforts to commercialize technology. Immediately prior to coming to the University, Walters spent over 20 years in technology-oriented companies in a variety of responsibilities including engineering, sales, operations, and executive management. Walters has served in the commercial aerospace, microelectronics, electronics, and manufacturing automation industries.

Larrell Walters  - Director of Technology Partnership, University of Dayton

NN: What key points would you emphasize to the business community regarding the technology transfer process?

The Business Community needs to have a good definition of business goals, objectives and limits they have regarding the results of the technology transfer process. For example, what returns are they looking for and what are the limits on the investments they can make into a new technology. Answers like "As much as possible" or "As little as possible" sound great, but really lead to a waste of their time and they walk away with a bad experience. We try to determine those types of issues up front just to make sure we are not trying to sell something that does not meet the overall goals.

NN: What advice would you give a business wanting license your patents?

Challenge the technology transfer personnel to be creative and innovative so that a "deal" can be worked out that is a win-win. For example, if there is very little upfront capital available, in the long run it is much better for both the university and the business to put those limited resources into a good marketing program or product development effort than it is to pay a hefty licensing fee upfront. We pride ourselves on having this type of flexibility and creativity.

NN: Prior to working with a business to develop a new technology, what questions must you answer? Patent rights? Mutually defined (and agreed upon) definitions of success? Critical path to success? Stock distribution? Funding opportunities? Other?

It is critical when jointly developing new technologies that all the "rules" be established before success occurs. Once the money starts to flow it is too late. Of critical importance are the patent rights, specifically, what fields of use does the business have rights to and what fields of use does the university have rights to. At the University of Dayton, if a business funds 100 percent of the development of a new technology, we grant them a royalty free, exclusive license to our inventions and joint inventions, within their specific field of use. We retain the exclusive rights to commercialize in all other fields of use. We do this because we are also interested in establishing a long term research relationship with the business, as well as commercializing technology. This why the office responsible for technology commercialization at the University of Dayton is known as Technology Partnerships, not Tech Transfer. Almost all the other questions that need to be asked will build from how the patent rights questions are answered.

NN: What are some of the hurdles in the way of commercialization of technologies discovered by universities?

I refuse to believe there are real hurdles to commercializing technology discovered by universities. There are however many misconceptions that get in the way. I can not begin to say how many companies feel they should get access to the technology for free because the research was funded by the Federal Government. The truth is the law does not allow universities to give technology developed under federal funds for free because of the Bayh Dole Act of 1980. In general the law says that people receiving federal funds for research can claim the rights to the technology, provided they must try to commercialize the technology developed and portions of the monies received from the commercialization efforts must be shared with the inventors and also goes back into research.

NN: Tell us about a few of the most interesting patents that your university has co-developed with a company.

The University of Dayton, working with the Air Force Research Laboratories, developed a ground breaking, economical method of homogeneously dispersing nano materials in an epoxy or composite. This technology was licensed to an Ohio Company, NanoSperse, who continued to work with us to develop continuation-in-part patents to expand the applicability of the technology. This has proven to be very successful for both Nanosperse and the University.

In general, the University of Dayton prefers to have a company involved for the development of the patent. A company has a different perspective about writing a patent than a University. To a company, a patent is a way of standing up a multi-million dollar business and providing it a protected competitive edge. At a university, the patent is usually the final stage of a research project and provides the ability to publish without jeopardizing any potential commercialization opportunities. Understandably so, these are two different perspectives that may significantly impact a way a patent is written. NN: What types of businesses are most likely to use it?

The patent developed with NanoSperse will be licensed by NanoSperse who will provide the polymer and composite industries with economical nano-enhanced concentrates that can be used to tailor material properties to the customers' specific applications

NN: Can you talk a bit about any patents pending that you would like the business community to know about?

There are several good things going on at the University of Dayton. How about a RF MEMS switch that works in 20 nanoseconds instead of 10 microseconds; operates on 10 volts instead of 50 volts; is normally in the "off" state instead of the "on" state; and finally, has no moving parts making it a million times more reliable than current MEMS technology. Did I mention it also has a lower manufacturing cost? Our Technology Partnerships Office can be reached at (937) 229-3515.

NN: If you could, would you change anything about the patent process?

I find it hard to believe that in this age of information and where businesses are born, grow, and fade in a matter of months; it takes more than three years to obtain a patent. I think the USPTO needs to rethink the entire patenting process with an eye on cutting the time to get feedback to 6 months and with patents being granted within a year.

The University of Dayton Research Institute is the research arm of the University of Dayton, located in Dayton, Ohio. UDRI is a national leader in scientific and engineering research, serving government, industry and not-for-profit customers. Our full-time professional staff of engineers and scientists conduct research and provide support in a wide variety of technical areas including materials development, materials testing, structural testing, cognitive systems, systems support, and nondestructive inspection methods.

Specific areas of strength include nanotechnology, structural testing, magnetics, ceramics, materials development/characterization, polymers, composites, fuel cells, lithium battery technology, and systems development.

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Brian Graves Head of Physical Sciences and Engineering, Imperial Innovations, at Imperial College, London.

Brian is widely experienced in business development and marketing in the engineering industry.

Previously, Brian worked for John Crane, part of Smiths Group plc, most recently in business strategy and analysis. Before that he was based in Chicago USA responsible for business analysis and competitive intelligence. The earlier part of his career, based in the UK, focussed on new product development, marketing communications and pricing strategy for European and international markets. The company's markets spanned a wide range of industries from automotive, chemicals and oil to pulp, paper and water in addition to original equipment manufacturers, from compressors to pumps.

Brian Graves - Head of Physical Sciences and Engineering, Imperial College, London

NN: What key points would you emphasize to the business community regarding the technology transfer process?

Universities are becoming increasingly experienced with working with business and are more aware of the potential of such relationships. Universities can add significant value to business by being a source of innovative technology, research expertise and technical know how.

There is a difficult boundary between universities and business concerning the need for universities to access increased market knowledge to be able to assess and direct the development of research and for business to support at a very early stage.

Through the intermediary of Imperial Innovations, Imperial's technology transfer company, we aim to develop strategic relationships with business which often involves not only developing the relationship between academic researchers and the R&D function in a company but also between the technology transfer office and the commercial teams in a business.

NN: What advice would you give a business wanting license your patents?

Business should think of universities as a potential source of new technologies that can enhance and complement their own research base. In developing partnerships with universities Business should be imaginative and strategic in its approach. Imperial has developed a number of initiatives with companies such as GSK, Rolls Royce, ABB. In such relationships the companies are not only investing money, but also market knowledge and product development expertise. Whilst universities possess significant technical expertise it is often difficult for them to identify potential applications, alongside this they have little experience of bringing products to market and the expertise and resources afforded to universities through such collaborative relationship is invaluable.

NN: Prior to working with a business to develop a new technology, what questions must you answer? Patent rights? Mutually defined (and agreed upon) definitions of success? Critical path to success? Stock distribution? Funding opportunities? Other?

Prior to working with industry the university must resolve the Intellectual Property (IP) ownership, this can be complicated by the fact that it is common for post-graduate students to own their own IP. Also in the medical/life sciences area there is considerable collaboration between hospitals and other institutions and research funded by charities thus leading to technologies with jointly owned IP. Being clear on IP ownership from the outset is essential. No company will want a technology in which they have invested being subject to any legal action at a later stage due to an IP ownership issue.

As the relationship with business develops towards a development collaboration both parties must have agreed clear and achievable milestones and know what each party is expected to deliver.

Business must also recognise that universities should share in revenues that accrue to the company through the exploitation of university IP. Sharing in the success of an achievement is a great incentive for academics to work with industry in the future. This should be in the form of either reasonable royalties or shareholdings in appropriate corporate vehicles whichever is the most appropriate commercialisation route.

NN: What are some of the hurdles in the way of commercialization of technologies discovered by universities?

There is often a gap in understanding by the university technology transfer offices of the market knowledge in particular technical areas (i.e. whether there is market demand) as well as an understanding of how a technology may be applied to different markets. A significant amount of market research is required to assess these which often is not possible due to the limited financial and human resources available to a university Technology Transfer Office. A partnership with industry could provide the necessary market intelligence to overcome this knowledge gap.

A further significant hurdle in the university commercialisation process is the lack funding to develop technologies from the initial research stage to proof-of-concept or prototype. Research funding available in the UK commonly funds 'blue-skies' research rather than the applied developmental work required to take a technology to market. Increasingly this is being recognised as a problem by the UK government, however, an adequate solution has yet to be found.

NN: Tell us about a few of the most interesting patents that your university has co-developed with a company.

Two patents based on novel semi-conductor production processes that have applications in the telecomms industry are being co-developed with a company through a collaborative research grant part fund by the government.

NN: Can you talk a bit about any patents pending that you would like the business community to know about?

A number of microfluidic technologies are under development at Imperial College, in particular a novel device for handheld diagnostic testing for use in GP surgeries is in development with a company called Molecular Vision and a number of successful collaborative research grants have been made to government agencies.

NN: If you could, would you change anything about the patent process?

There is considerable cost associated with protecting technologies particular when patents enter National Phase. For technologies that require significant development this cost can often be prohibitive for many universities.

Greater harmonisation of patent laws internationally would be welcome. Significant cost savings have been achieved within the EU. By having an EU application extending this concept further to different territories would be beneficial. Also there are significant differences in patent law around the world especially with regard to computer related inventions and genetic based applications. The different interpretations are confusing and costly.

"Imperial Innovations is one of the UK's leading University based technology transfer companies. A wholly owned subsidiary of Imperial College London, we provide business development and technology transfer services including strategic industry University partnerships, patenting, licensing, spin-out incubation and spin-out equity management.

Established in 1988, our experienced commercial organisation excels at assessing, selecting and protecting the Intellectual Property derived from Imperial's world-class research. The College is recognised as being an internationally renowned institution for research and a leader in innovation."

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William J. Decker Assistant Director, Physical Science Licensing in the Technology Transfer and Intellectual Property Services (TechTIPS) office of the University of California, San Diego (UCSD).

Bill Decker received his Ph.D. from the University of Virginia in Engineering Physics in the area of nonlinear dynamics and chaos. He is currently an Assistant Director, Physical Science Licensing in the Technology Transfer and Intellectual Property Services office of the University of California, San Diego (UCSD). Prior to joining the technology transfer office at UCSD, Bill was one of the first employees of ChromaVision Medical Systems, Inc., a publicly -held company now known as Clarient. At ChromaVision he held positions of increasing responsibility with duties that were cross-functional between business and R&D. Bill's work at the company resulted in four issued US patents, with other patents pending in the US and Europe.

William Decker - Assistant Director, Physical Science Licensing, Technology Transfer and Intellectual Property Services, University of California, San Diego

NN: What key points would you emphasize to the business community regarding the technology transfer process?

I would emphasize the need for patience by the business community when dealing with university tech transfer. The key mission of most universities, especially public universities, is not to make profits as a business would but to promote the public good via research and teaching students, and so their interactions with businesses might seem more like a clash of cultures requiring diplomacy rather than the usual negotiation interaction in a business-to-business transaction.

NN: What advice would you give a business wanting license your patents?

I would advise the business to have a solid road map to commercializing the technology, because university technology is usually (though not always!) at a very early stage of development, where a solid plan is critical to your chance of success. The second key ingredient is to have good business people. If you have good people with a good plan, it really increases your chance of success.

NN: Prior to working with a business to develop a new technology, what questions must you answer? Patent rights? Mutually defined (and agreed upon) definitions of success? Critical path to success? Stock distribution? Funding opportunities? Other?

I need to know what field the business is engaged in, what particular technologies they are interested in, how the business field intersects with the technology field, their plan for commercializing the technology, how long will they need the rights, and how to measure diligence in the commercialization path to the marketplace. If the university is to take equity in the company, than I need to know the details of their incorporation and current capitalization structure.

NN: What are some of the hurdles in the way of commercialization of technologies discovered by universities?

There is a big gap between proving a concept and having three working, commercial-grade prototypes of a possible product (or having human data, if you are in the biomedical arena). University researchers are often only interested in proving a concept, publishing, and moving on to the next concept. Our inventions are usually at this very early stage. But having a tangible prototype of a product means a great deal in creating more value for a business interested in commercializing that particular technology, both in advancing the technology and the value of the technology at the time of licensing. Overcoming this hurdle - the gap between proof-of-concept and three working prototypes (or human data, if you are in the biomedical arena) - is key.

NN: Can you talk a bit about any patents pending that you would like the business community to know about?

Here at the University of California, San Diego, we have an interesting mix of cross-functional research related to nanotechnology. This mix has resulted in having other licensed patents pending in the area of nanotechnology as applied to genotyping and gene expression, as well as unlicensed patents pending in nanolithography (published US application 2004010489), ultra-high density storage media (published US application 20040071951), and read heads for such media (published US application 20040062177). Other nanotechnology - related to patents pending and other technologies - are also available for licensing. We also have very interesting technologies in areas that are outside nanotechnology, so please check out our website at for more information.

NN: If you could, would you change anything about the patent process?

In my opinion, the protection of intellectual property is the most important way a government can promote science and the arts. The United States Patent and Trademark Office (USPTO) is self-funded through its fees, rather than through taxes, but does not always get to keep all the money it brings in. Traditionally, some funds have been directed out of its budget to other government programs. Those of us seeking intellectual property protection appear to pay high fees during the prosecution process, yet do not seem to get much by way of a rigorous examination, which I mainly think is due to the lack of support of the hard-working examiners in the patent office. So, because of the lack of resources within the USPTO, an issued patent is not really tested until it is litigated. In the end, this means the promotion of science and the arts is demeaned by the overabundance of litigations, re-examinations, and challenges that - in my opinion - are caused by an overworked patent office that has been stripped of its resources by the budget process. The practice of diverting funds out of the USPTO must end permanently.

Technology Transfer on the UCSD Campus

The University of California San Diego (UCSD) recognizes the importance of fostering the commercial development and utilization of technologies that result from research activities on campus for the public good. In November 1994, UCSD established its campus Technology Transfer and Intellectual Property Services (TechTIPS) to promote and facilitate this process. With its close proximity to UCSD researchers, TechTIPS is ideally positioned to manage the intellectual property developed at UCSD and to provide educational and information services on intellectual property matters to the UCSD community. It is the goal of the university to nurture a highly proactive culture committed to transferring innovations from campus to the private sector for the benefit of society.

[Return to Top of Interviews]

Norma Dunipace Manager of Partnership Development, Industrial Partnerships And Commercialization (IPAC): Technology Transfer at Lawrence Livermore National Laboratory (LLNL).

Norma Dunipace has B.S. in biology and an MBA. She also has ten years in high-technology business development, including working as director of business development for BDM International.

Advice to partners: Understand the problem you are trying to solve before coming to LLNL. This makes it easier to find the technology that can best help you. Also, at least have a mental idea of a business plan and where you are headed with your company.

Norma Dunipace -  Manager of Partnership Development, Industrial Partnerships And Commercialization (IPAC), Technology Transfer at Lawrence Livermore National Laboratory (LLNL)

NN: What key points would you emphasize to the business community regarding the technology transfer process?

The Lawrence Livermore Lab is owned by the U.S. Dept. of Energy and operated by the by the University of California. Licensing from LLNL is similar to licensing from the University of California. We have some additional requirements from the Dept. of Energy. We advertise our licensing opportunities on the website.

We generally license US companies and we generally require that our licensees substantially manufacture in the U.S. We have a large body of patented (or patentable) inventions as well as software. We have many successful licensees with products on the market. We have about 100 active patent licenses. Annually, we do 10 to 30 licenses per year and 80 to 100 software end user licenses. Licensees must agree to commercialize the technology they have licensed from us. We have insurance and indemnity requirements.

NN: What advice would you give a business wanting license your patents?

Companies must provide us with enough information to show us they have the financial, technical, and management capabilities to commercialize LLNL technology. A well thought out commercialization plan for the technology increases a company's change for obtaining a license.

NN: Prior to working with a business to develop a new technology, what questions must you answer? Patent rights? Mutually defined (and agreed upon) definitions of success? Critical path to success? Stock distribution? Funding opportunities? Other?

Does the company have the technical understanding of the technology it plans to license. Because LLNL licenses early-stage technology, technical hurdles can be an issue. We also want to know if the business adequately capitalized. We look for a management team that understands the marketplace and is focused.

Patent rights? LLNL can only license patentable technology. In most cases the patent has issued or a patent application has been filed. LLNL does not license trade secrets or "know-how."

Mutually defined (and agreed upon) definitions of success? LLNL requires that the licensee agree to commercialize the technology and not just shelve it. The license will include negotiated milestones.

Critical path to success? LLNL reviews the company's commercialization plan and LLNL and the company together define milestones for successful commercialization.

Stock distribution? Not normally an issue. However, sometimes, LLNL may take a small amount of equity in a company that is cash-poor. This is done in rare cases and when there is no apparent conflict in doing so.

Funding opportunities? We evaluate the company's financial situation before entering into a license. LLNL does not fund companies to commercialize LLNL technology.

Other? In most cases, the licensee must be US-owned or have a major business unit in the US. The company must agree to substantially manufacture in the US or LLNL must obtain DOE approval about alternate benefits to the US.

NN: What are some of the hurdles in the way of commercialization of technologies discovered by universities?

Companies may not have a good technical understanding the technologies they are seeking to license. Companies may not have adequate funding to get very far in the commercialization. Sometimes, companies try to do too many different things that they lack focus. Sometimes, prospective licensees do not understanding licensing or the legal matters that surround licensing.

It can be a problem for both the university (and Lab) and a prospective licensee if an inventor is not eager to cooperate or if the inventor is no longer employed by the university.

Insurance requirements are higher than start ups can sometimes afford.

NN: Tell us about a few of the most interesting patents that your university has co-developed with a company.

Laser Peening.....this is a process of treating metal to eliminate stress failures. There are several patents covering the process, some of which arose out of a Cooperative Research and Development Agreement with a company. Many of the patents are co-owned with the company that is now a licensee.

NN: What types of businesses are most likely to use it?

Metal treating businesses.

NN: Can you talk a bit about any patents pending that you would like the business community to know about?

LLNL has many patents pending in many areas - lasers, environmental, biotechnology, advanced materials, nanotechnology, etc. Companies should look at the LLNL website (and specifically under Industrial Partnerships and Commercialization) for technologies of interest.

NN: If you could, would you change anything about the patent process?

The patent process is still too slow.

IPAC Mission

To enhance U.S. economic competitiveness in world markets, promote economic development both locally and throughout the U.S., and help improve the quality of life for all Americans by transferring LLNL-developed technology to industry.

To help achieve LLNL's programmatic objectives in the highest quality and most cost effective way by jointly developing technology with industry.

[Return to Top of Interviews]

Nanotechnology Intellectual Property Challenges

The large influx of investment in nanotechnology research should accelerate the availability of commercial nanotechnology applications. Therefore, it is critical to develop intellectual property strategies that allow for fluid transfer of government-funded science to the private sector for commercialization of nanotechnology. As with the emergence of any pioneering technology, nanotechnology creates issues and opportunities in perfecting intellectual property rights.

Laws covering products and technology since the Industrial Revolution may not apply to nanotechnology. Can you patent an atomic or molecular structure? How do you protect an atom or molecule-sized device from being illegally copied? How will patent policies evolve and affect the scope of nanotechnology patents? These and other intellectual property questions require resolution in order to make effective and efficient use of nanotechnology innovation.

Today, nanotechnology intellectual property issues focus primarily on patents, with additional issues relating to trade secrets. Some of the current issues and challenges encountered in nanotechnology intellectual property are briefly described below:

Patent Applicability: It is generally accepted that the properties of matter and other fundamental scientific discoveries are not patentable. An initial challenge for patent strategists is to determine how to obtain patent coverage that is based on the discovery of inherent properties of materials. Simply submitting a smaller version of a known structure would not be considered patentable without additional utility or novelty. In order to secure a patent, the invention must be "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The traditional bases for patentability-novelty, non-obviousness and utility-can be secured by focusing on previously unattainable size, structure, compositions, organization, methods of measurement and methods of changing the property of materials, as well as applications of the new properties.

Balancing Innovative Freedom and Restrictive Intellectual Property: The increasing rate of patent applications by universities and private research organizations highlights another potential challenge for the nanotechnology industry: striking a balance between maintaining freedom of operation for a large number of innovators, while rewarding innovations with patent rights. A large number of patent owners exercising the right to exclude others from practicing various aspects of nanotechnology can seriously restrict future research and development. Before commercializing nanotechnology products, companies may have to obtain licenses from a large number of patent owners. In order to attain the proper balance between innovation and exclusion, patent strategists will need to consider ethical questions about the division and aggregation of legal rights and reassess the scope of licensing practices.

Academic Publication as Premature Disclosure: The nature of academic research tends to make securing intellectual property rights more challenging. Publication and early disclosure is the traditional measure of academic performance. The ultimate reward for a researcher relies on the rapid and wide distribution of research results so that research can be cited by others. Premature disclosure can defeat trade secrets and weaken the ability to secure patents.

—Terry K. Tullis
2004 UCLA J.L. & Tech. Notes 12
Current Intellectual Property Issues in Nanotechnology

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Tiny Tech Jobs August 2005


The U.S. Patent and Trademark Office's new index and cross-reference for nanotechnology are likely to impact every nano-based business or inventor who has sought or is seeking legal protection of intellectual property, according to IP lawyers. Initiated in mid-October, the digest will make it easier to search for "prior art," collect issued U.S. patents and publish patent applications relating to nanotechnology.

Experts say the action will lead to stronger, more defensible patents and encourage innovation by increasing confidence in the patent system. They added that the action was necessary because of the difficulty in classifying nanotechnology inventions. Richard Acello, Small Times link (Make your life easier, use our NanoTech-Transfer database to search only nanotech-related patents and patents pending. Try our 90-day, no risk, free trial.)

While scientists toil to conquer the mechanics of nanotechnology and Wall Street strives to cash in on it, the intellectual property bar and the United States Patent & Trademark Office ("USPTO") have begun to prepare for an onslaught of new patent applications and potential new patent prosecution pitfalls. As the fundamental science of nanotechnology (which embraces combined elements of, at least, such well-developed arts as chemistry, physics, electronics, material science, and mechanical engineering) seems likely to be readily integrable into the scope of traditional patent protection, nanotechnology-related patent applications are not expected to encounter the wholesale confusion associated with early prosecution practice as to claims for business methods and certain biotechnology applications, both of which were initially held by the USPTO to be non-patentable subject matter. Still, there may be problems unique to the prosecution of nanotechnology-related patent claims. One oft-voiced concern of the intellectual property bar is that, in the absence of a specialized nanotechnology examining group, early-filed nanotechnology patents may issue with claims of unusually broad scope. Such fears may rest on the theory that Examiners in discrete technology areas (say, electronics) may lack the necessary trans-disciplinary knowledge and experience in other fields (such as materials science or chemistry) implicated by the often-complex combination of sophisticated synthesis and materials processing techniques necessary to obtain and manipulate nano-scale devices having electrically- and otherwise-useful properties, and that such Examiners may thus allow claims broader than are justified by the prior art as a whole or by the enabling disclosure of the applicant. —Iona Kaiser link

Patents are valuable business assets. In fact, many experts agree that intellectual capital has surpassed tangible assets when valuing American business. In the field of nanotechnology, patents can provide considerable valuation, if prepared and prosecuted carefully. Nanotech patents present some unique challenges. —Maria S. Swiatek, Richard F. Trecartin link (a list of top issues to consider when drafting and obtaining nanotechnology patents follows)

Nanotechnology patents are issuing in increasing numbers. In the United Sates we are seeing a large increase in the number of granted patents directed to one or more aspects of nanotechnology. —Maria S. Swiatek, Richard F. Trecartin link (charts on Trends in Granted Patents follows)

U.S. patent examiners must become better educated about nanotechnology if the burgeoning industry is going to fully thrive, experts say. They also say that the United States Patent and Trademark Office (USPTO) needs to find a bureaucratic home for nanotechnology developments. As nanotechnology patents flow into the system, representatives of the industry are working with the USPTO to let agency examiners know that nanotechnology is a unique, interdisciplinary science that deserves special attention. —Doug Brown, Small Times link

Patent application cases concerning nanotechnology have grown rapidly in China over recent years, with the number following the United States and Japan to take the world 's third place. According to the Chinese Ministry of Science and Technology ( MST), during the decade before 2001, China's total applications for nanotechnology patents numbered less than 1,000. The figure soared in the past two years and amounted to 12 percent of the world's total. China now has more than 2,400 such patents. link

The time for nanotechnology has come and a classic technological revolution is unfolding. According to the National Science Foundation, by 2015 the annual global market for nano-related goods and services will top $1 trillion, making it one of the fastest growing industries in history. If these figures prove to be accurate, nanotechnology will become a larger economic force than the combined telecommunications and information technology industries at the beginning of the technology boom of the late 1990s. However, history has shown that forecasting technological advances is fraught with difficulty and, consequently, devising policies for them almost impossible. Many products that will be developed early on may remain within existing markets or established sectors, and thus, may not be marketed as nanoproducts. —Raj Bawa, Ph.D. link

The number of nanotechnology patents grew by 600% at the USPTO between 1997 and 2002. Patent Offices around the world are still developing methodology to deal with this new field, complicated by the fact that it is so multidisciplinary, incorporating chemistry, biology, physics computer science, pharmaceuticals, materials science, engineering, electronics and medicine amongst others! link

Intellectual property (IP) is critical to the survival of many companies, particularly young nanotechnology companies, which seek to develop valuable patent portfolios as a basis for corporate value. The Patent Office increasingly must examine nanotechnology patent applications and, recently, has been willing to provide the public with its views on nanotechnology patent policies. The Patent Office wants to listen to the public. In the dot com era, the Patent Office was criticized for some of its patenting decisions, and there is a general hope that nanotechnology patents will be a boom to nanotechnology, not a basis for criticism. Foresight Nanotech Institute link

Our friends at Lux Research have given us another reason to be wary of all the dollars and hype poured into nanotech: Patent madness. According to a report, released today, as of March 3,818 nanotechnology patents had been issued by the U.S. government with 1,777 more pending. Wow- there must be a lot of innovation going on that will surely yield promising commercial opportunities, right? Wrong, says Lux. link

The qualities that make any invention patentable are novelty, nonobviousness, and utility. While many unique properties of nanotechnology are already known, more are being discovered, as are new ways of exploiting known properties, all of which can lead to patentable inventions. The growth of patents in nanotechnology is a clear indication of the potential of this field. link

As an emerging science in its infancy, nanotechnology promises the nano-scale manufacture of materials and machines made to atomic specifications. It is a field at the junction of chemistry, physics, biology, computer science and engineering. In the context of this paper, nanotechnology will be referred to as a manufacturing as well as a computational science, since many of tomorrow's manufactured items exist today only as models and simulations. The impact of nanotechnology on our way of life is widely believed to reach profound and hitherto unimagined levels in the coming decades. Proposed changes include clean abundant energy, pollution-free and inexpensive production of superior defect-free materials, complete environmental restoration and cleanup, safe and affordable space travel and colonization, and quantum leaps in medicine leading to perfect health and immortality. As a result of these advances, we anticipate the obsolescence of nearly all of today's industrial and economic processes by the first half of the new century, leading to global and radical changes in life style, finance, law, and politics. —Behfar Bastani, Dennis Fernandez link (This paper presents a brief overview of intellectual property rights, and the various areas in nanotechnology to which IP rights may be applicable. Technology transfer, including licensing and business agreements, are not covered. Instead, issues related to the science of nanotechnology and the challenges surrounding the acquisition of IP rights are presented.)

We are at a time of uncertainty and flux in the regulation of nanotech products, particularly in the regulation of nanobio products. Nanotechnology involves a new set of technologies, and adjustments in current legal and regulatory frameworks will be required to handle the unique technical, safety, and toxicological characteristics of nanotech products. Regulators and law-makers are carefully monitoring the development of this new industry, reviewing existing laws and regulations to determine how well they cover the new nanotech developments, and attempting to craft new laws and regulations when necessary. Until these regulators and law-makers complete their task, the laws and regulations covering nanotech products will continue to change and evolve.

Any company developing and commercializing nanobio products must carefully craft a strategy for dealing with intellectual property issues and regulation by numerous federal and state government agencies, including the FDA, EPA, OSHA, U.S. Department of Agriculture, Consumer Product Safety Commission, Department of Commerce, Department of Energy, and Department of Defense. Many existing laws and regulations will be adequate for dealing with nanobio products. However, certain unique features of nanobio products may require new regulations or a new interpretation of existing laws and regulations. link

More than 3,800 U.S. nanotechnology patents have been issued as of late March (2005) and another 1,777 patents applications are pending, according to a study released Thursday (April 21, 2005) that concludes a "gold-rush mentality" grips nanotechnology research. The new report by Lux Research found that nanotechnology researchers around the world are steadily filing patents in hopes of creating "toll booths" for future product development. The study identified building block nanomaterials such as carbon nanotubes and quantum dots as areas of particular focus. link


"Patent" News: November 01 - December 31, 2005

Nanogen Expands Patent Portfolio
prnewswire December 22, 2005 Nanogen, Inc. (Nasdaq: NGEN), developer of advanced diagnostic products, announced today that its subsidiary Epoch Biosciences has been issued two patents by the U.S. Patent and Trademark Office for technologies related to genetic analysis.

Yet Another Altair Press Release December 22, 2005 Jack Uldrich: It had been more than a month since Altair Nanotechnologies (Nasdaq: ALTI) last issued a meaningless press release. The silence was so deafening, I was beginning to think that Altair's management might actually be focusing on the real work of building a company. Unfortunately, I was wrong.

Altair Nanotechnologies Expands Intellectual Property Portfolio
marketwire December 19, 2005 Altair Nanotechnologies, Inc. (NASDAQ: ALTI) today announced that the U.S. Patent Office issued Altair U.S. Patent 6,974,566 a 'Method For Producing Mixed Metal Oxides and Metal Oxide Compounds.'

Nanosphere, Inc. Awarded U.S. Patent for Biobarcode(Tm)
businesswire December 15, 2005 Nanosphere, Inc., a nanotechnology-based molecular diagnostics company, today announced the company's Biobarcode(TM) technology has been awarded patent number 6,974,669 by the U.S. Patent and Trademark Office. Biobarcode(Tm) technology promises to accomplish for protein detection what PCR has for nucleic acid detection and genomics.

NCSH Announces the Filing of a Patent Application
businesswire December 14, 2005 Nano Chemical Systems Holdings, Inc. (OTCBB:NCSH), today announced the filing of a patent for a temporary taggant product. This is a product that is delivered by an aerosol process and yields a bright fluorescent color to denote an emergency location or a previously examined area for emergency personnel, law enforcement and the military.

Nano college to hire first in-house lawyer
ACBJ December 12, 2005 The state University at Albany's College of Nanoscale Science and Engineering hired its first in-house general counsel. Brenda Lubrano-Birken, 36, joins the college, which includes Albany NanoTech, after nearly five years at the Albany law firm Honen & Wood P.C.

Arrowhead Assembles a Carbon Nanotube Patent Portfolio
businesswire December 08, 2005 Arrowhead Research Corporation (Nasdaq: ARWR), a diversified nanotechnology company, announced today that wholly owned subsidiary NanoPolaris, Inc. has assembled a portfolio of intellectual property to facilitate and enable the manufacture of nanotube-based products.

Nano, Nano, On The Wall... December 07, 2005 The beauty products business as a whole is making a big bet on nanotech. L'Oréal, which devotes about $600 million of its annual $17 billion revenues to research, is the industry leader on nanopatents. But rivals such as Procter & Gamble, Estée Lauder (EL) of the U.S., Christian Dior of France, and Japan's Shiseido (SSDOY) also incorporate nanoparticles into their products.

Magic Hand on Nanotube Developed December 01, 2005 A team of Korean scientists has found the ideal technology to handle the carbon nanotube, the futuristic material that is showing enormous potential for a range of new technologies including nano-electronics.

The team, led by Ahn Sang-jung, a senior researcher at the Korea Research Institute of Standards and Science, Thursday said they used the technology to make an atomic force microscope (AFM) tip.

Biophan Announces Issuance of Two New Patents
businesswire November 30, 2005 Biophan Technologies, Inc. (OTCBB: BIPH; FWB: BTN), a developer of next-generation biomedical technology, announced today the issuance of two new patents, further extending the Company's technology leadership, bringing the number of issued patents to a total of 45.

ASM International and Oxford Instruments Sign Agreement
marketwire November 29, 2005 ASM International N.V. (NASDAQ: ASMI) (Euronext Amsterdam: ASM) and Oxford Instruments plc (LSE: OXIG) announced that they have signed an agreement granting Oxford Instruments a license on ASM's patent portfolio relating to Atomic Layer Deposition (ALD) technology.

NanoMed Pharmaceuticals Founders Issued Patent
prnewswire November 29, 2005 NanoMed Pharmaceuticals, Inc. founders Michael Jay, Ph.D. and Russell J. Mumper, Ph.D. have been issued U.S. Patent 6,855,270 entitled "NanoScintillation Systems For Aqueous-Based Liquid Scintillation Counting." Their invention, assigned to the University of Kentucky Research Foundation and licensed exclusively to NanoMed Pharmaceuticals, covers processes to make nanoparticle-based NanoScintillation Systems which are used to detect beta-particle- or alpha-particle-emitting radioisotopes without the use of the organic solvents commonly used in conventional liquid scintillation (LS) "cocktails."

Tool for low-temperature carbon nanotube growth starts trials
University of Surrey November 29, 2005 ATI and CEVP joint venture set to catalyse revolution in flat displays, ICs, high-brightness light sources, etc

Sarnoff To Commercialize ExxonMobil's Nano Materials
Sarnoff Corporation November 28, 2005 Sarnoff To Identify and Pursue Applications, Markets, and Licensees Under Five-Year Agreement

Nanogen Issued Patent for Technology Enabling Assay Development November 17, 2005 Nanogen, Inc. (Nasdaq: NGEN), developer of advanced diagnostic products, announced today that its subsidiary, Epoch Biosciences, was issued Patent No. 6,962,991, "Process for the synthesis of pyrazolopyrimidines" by the U.S. Patent and Trademark Office.

Crowley and Tripp Files Patents November 12, 2005 The technologies that were invented at Soundwave Research Laboratories include carbon nanotube ribbon microphones, extremely high-strength ribbon processes and significant improvements in the consistency, purity and quality of the recorded signal.

NaturalNano to Present at Finance Conference
prnewswire November 10, 2005 NaturalNano Inc., a company whose primary business is discovering, refining, and marketing naturally occurring nanomaterials, announced today that President Michael Riedlinger will present at the Technology Finance 2005 on November 17, 2005 in Milan, Italy.

QuantumSphere to Fundamentally Alter Battery and Fuel Cell Markets
QuantumSphere November 09, 2005 Files Two Patents - Development Enables Increased Power and Efficiency At Lower Production Costs

NVE Notified of Magnetothermal MRAM Patent Grant
prnewswire November 08, 2005 NVE Corporation said today that it has been notified by the U.S. Patent and Trademark Office of the expected grant of a key patent for magnetothermal Magnetoresistive Random Access Memory (MRAM).

Nanogen Issued Patent
prnewswire November 08, 2005 Nanogen, Inc. announced today it was issued Patent No. 6,960,298, "Mesoporous permeation layers for use on active electronic matrix devices" by the U.S. Patent and Trademark Office.

Bought by Invitrogen, Hayward's Quantum Dot closes its doors
ACBJ November 07, 2005 Quantum Dot Corp., the once high-flying nanotechnology company, is shutting its doors after being bought by life sciences firm Invitrogen Corp. in October.

Asylum Research Licenses Magnetic Actuated Cantilever Technology
Asylum Research November 04, 2005 

China skips 'small talk' but tops nano patents in South November 03, 2005 The vast majority of health patents filed in nanotechnology are owned by organisations in developed countries, with China a notable exception, according to research published last month. Yet, despite being a strong leader in this emerging field, which is predicted to generate a US$1 trillion industry by 2020, China is not participating in international debates on the role of nanotechnology in sustainable development, according to the study.

From Our Molecular Future: How Nanotechnology, Robotics, Genetics, and Artificial Intelligence Will Transform Our World, by Douglas Mulhall:

  • What happens to the monetary system when everyone is able to satisfy his own basic material needs at very low cost?
  • How would we use cash when digital manufacturing makes it impossible to differentiate a counterfeit bill or coin from the real thing?
  • What happens to fiscal policy when digital information, moving at light speed, is the major commodity?
  • How fast will monetary cycles move compared to, say, the ten- or twenty-year cycles of the late twentieth century, when products and patents go out of date in a matter of months instead of years?
  • What happens when we don't have to worry about trade or social services for our basic needs, because most of what we need is provided locally with digital manufacturing, and the biggest trade is in information?
  • How do we control the excesses of the ultrarich, the overabundance of the molecular assembler economy, and the challenge to intellectual property laws created by intelligent, inventive machines?
  • What happens if half of all jobs are made redundant every decade?
  • What happens to the War on Drugs when there's no import, export, or transport of contraband because drugs can be manufactured in a desktop machine using pirated software downloaded from the Internet?
  • What happens to democratic controls when individuals can get as rich as small governments in a year or so?
  • What's the relevance of insurance if many things are replaceable at very low capital cost, but liabilities from software are potentially unlimited?
  • How should organized labor react when molecular assemblers and intelligent robots eliminate most manufacturing jobs?
  • What is the nature of work going to be?
  • What happens to land prices when an individual can build a tropical farm under a bubble in North Dakota, and get there from New York in an hour?
  • What happens when everyone can go everywhere, whenever they want, and work from wherever they want?

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Issue #32 will cover Jobs in Nanotechnology . It will land in your mailbox February 6th, 2006.

Infamous Quotes:

"This 'telephone' has too many shortcomings to be seriously considered as a means of communication. The device is inherently of no value to us." Western Union internal memo, 1876
"Heavier-than-air flying machines are impossible." - Physicist and mathematician Lord Kelvin, President of the British Royal Society, 1895
"Everything that can be invented has been invented." - Charles H. Duell, Director of U.S. Patent Office, 1899
"There is no likelihood man can ever tap the power of the atom." - Robert Milikan, Nobel Laureate in Physics, 1923
"Theoretically, television may be feasible, but I consider it an impossibility-a development which we should waste little time dreaming about." - Lee de Forest, inventor of the cathode ray tube, 1926
"I think there is a world market for maybe five computers." IBM's Thomas Watson, 1943
"Landing and moving around on the moon offer so many serious problems for human beings that it may take science another 200 years to lick them." - Science Digest, August 1948
"Computers in the future may weigh no more than 1.5 tons." Popular Mechanics, 1949
"There is no reason anyone would want a computer in their home." Ken Olsen, Digital Equipment Corp, 1977

And the lesson is? It's a tough game to call.

Need advice? Check out NanoStrategies

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