SKGF_Presentation_Nano_2004

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  • 1. Nanotechnology: Perspectives on the State of the Art and Intellectual Property Presented at: Third Annual Hot Topics in Intellectual Property Law Duke University School of Law March 26, 2004 Donald J. Featherstone Michael D. Specht Director Associate Ph: 202-772-8629 Ph: 202-772-8756 Email: donf@skgf.com Email: mspecht@skgf.com © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 2. Overview • Nanotechnology 101 • Nanotechnology Business Environment • Nanotechnology Intellectual Property © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 3. Nano 101 Definitions • What is Nanotechnology? Typically, dealing with “things” ranging from a few nanometers to hundreds of nanometers. Perspective A nanodot is to a crumb, as a basketball is to the Earth (roughly 5nm Quantum Dot speaking and depending on the size (viewed through a transmission of the crumb) electron microscope) © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 4. Nano 101 Definitions “Research and Development at the atomic, molecular or macromolecular levels, in the length scale of approximately 1-100 nanometer range, to provide a fundamental understanding of phenomena and materials at the nanoscale and to create and use structures, devices and systems that have novel properties and functions are developed at a critical length scale of matter typically under 100 nm. In some particular case, the critical length scale for novel properties and phenomena may be under 1 nm (e.g., manipulation of atoms at approx. 0.1 nm.) or be larger than 100 nm. (e.g., nanoparticle reinforced polymers have the unique feature at approx. 200-300 nm. As a function of the local bridges or bonds between the nanoparticles and the polymer.” - Definition provided by the U.S. Patent Office at Nanotechnology Partnership Meeting Perspective “Things” are not as simple as they may seem. © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 5. Nano 101 Applications Life Sciences e.g., drug delivery, lab-on-a-chip, drug design Security e.g., molecular level barcoding, chemical detection Materials e.g., powders, polymers, gecko-feet © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 6. Nano 101 Applications Electronics Nanowires e.g., LCDs, Semiconductors, Memory Energy e.g., solar cells, fuel cells, membranes Nano Tools e.g., STMs, AFMs Flexible Displays Perspective The wide range of applications is one force driving the excitement surrounding nano. © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 7. Nano 101 History “It is a staggeringly small world what is below. In the year 2000, when they look back at this age, they will wonder why it was not until the year 1960 that anybody began seriously to move in this direction.” Richard P. Feynman, 1959 Perspective Nanotechnology has been around for a long time. © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 8. Nano 101 Recent History 2000 – National Nanotechnology Initiative 2001 – Nanobusiness Alliance Launched 2003 – First U.S. Patent and Trademark Office Nanotechnology Partnership Meeting 2003 – $3.7B 21st Century Nanotech Research and Development Act Perspective 2004 – (Lots of) Talk of the First Nanotech has reached Nanotech IPO a commercialization inflection point. © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 9. Nano Business Environment Hype v. Reality “Nanotechnology will revolutionize the biotech, medical, and pharmaceutical industries. This may reduce sickness and suffering . . . and increase life expectancy.” - U.S. Patent Office. “It is one of the most promising and exciting fields in science today.“ – Senator Boehlert, Senate Science Committee Chairman A potential IPO for Nanosys has been compared to the IPOs of Microsoft, Netscape and a potential Google IPO. – Front Page of U.S. Today Business Section, Dec. 4, 2003. Perspective Lots of Hype. But, is it real? © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 10. Nano Business Environment Hype v. Reality Perspective The Science is Real. © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 11. Nano BusinessEnvironment Hype v. Reality Nanotechnology Venture Capital Funding 350 300 $Millions 250 200 150 100 50 Perspective 0 Venture capitalists are 95 96 97 98 99 00 01 02 03 noticing. 19 20 19 19 19 19 20 20 20 Year © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 12. Nano Business Environment Hype v. Reality Punk, Ziegel Nanotechnology Index Altair Technologies Inc. Nanomaterial Manufacturing BioSante Pharmaceuticals, Inc. Nanoparticulate-based vaccine adjuvant and delivery system FEI Co. Nano-profilometry (SNP) imaging systems. Flamel Technologies, S.A. Biopharmaceutical drug delivery systems Harris & Harris Group, Inc. Nanotech venture capital group JMAR Technologies, Inc. Plasma lithography at sub-100nm level MFIC Corp. Fluid materials processing systems Perspective Nanogen, Inc. NanoChip Molecular Biology Workstation Real products are Nanophase Technologies, Corp. Nanocrystalline materials emerging and Wall Nano-Proprietary Inc. Carbon nanotube technology NVE Corp. Spintronics Street is noticing. Pharmacopia, Inc. Drug discovery and chemical dev. processes SkyePharm PLC Integrated drug delivery Symyx Technologies Inc. Nanomaterial discovery Veeco Instruments Inc. Nanoman, PicoForce, Nanoscope © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 13. Nano Business Environment The Role of Intellectual Property We identify Nanosys IP a clear-cut leader in commercializing The company’s as colors perceptions of the 51% Increase company’s on the exclusivity and breadthstockIP, … - Single day of its price nanotech basedcompetitive advantage, appropriate valuation,after appropriate and successfulthat it increase and Nanogen, Inc. announced execution - Charles Harris, CEO of Harris & Harris Group Nanosys has cornered the market patent in the nanotech strategies. IP a “key” U.S. for patents in inorganic had received landscape of other companies inform nanomaterials and has built a tremendous market in to target perceptions of competition in that framework general. a host of large and growing marketsGroup Wolfe, Managing Partner of - Lori Pressman, Partner, Harris & Harris . - Josh Lux Capital Perspective IP is a critical differentiator! © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 14. Nano Intellectual Property Where the Action Is • Patent Application Prep and Prosecution • Technology Transfer – Government Funding – University Spin Outs • Licensing • IP Strategy Development © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 15. Nano Intellectual Property A View from the USPTO Nanotechnology Patenting Categories Electronics 8% Energy/Environment Chemistry 26% 24% Information Technology 7% Manufacturing/ Textiles Engineering 3% 10% Optics Advanced Materials Medical 3% 13% 6% Source: U.S. Patent Office Perspective USPTO has its hands full. © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 16. Nano Intellectual Property A View from the USPTO • About 1500 Nano-related patents issued thru fall 2003 • Examiner education underway • No new tech centers or classification planned • Many Classes Involved: 57 (textiles derived from fullerenes), 106 (paint with nanoparticles that change colors), 204/422/435 (chemistry: electrical and wave energy/apparatus/molecular biology and microbiology), 257 (semiconductors), 423 (fullerenes), 428 (magnetic nanoparticles), 438 (molecular engines and computers), etc. Perspective Can the USPTO rise to the challenges? © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 17. Nano Intellectual Property Preparation and Prosecution • The Usual Suspects –Novelty - 35 U.S.C. 102 –Obviousness - 35 U.S.C. 103 –Enablement - 35 U.S.C. 112 Perspective One patent law for all technologies. © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 18. Nano Intellectual Property Preparation and Prosecution • From USPTO Partnership Meeting, Issues the USPTO will focus on: – Inherency – Enablement – Predictability or lack thereof – Quantity of experimentation needed – Breadth of claims © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 19. Nano Intellectual Property Obviousness • Size probably does not matter, unless there is some unknown or unpredictable result – see, In Re Rose (Lumber case) – but see, In Re Hoeksema (Chemical case) © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 20. Nano Intellectual Property Inherency • With respect to the limitation in claim 14, the reference discloses that the device can detect with submicron accuracy. Although the reference fails to disclose operating on the nanometer range, the Examiner sees no difference in the Applicant’s claimed invention and that provided by the reference which would create this significant difference in accuracy. Therefore, the Examiner argues that the reference would have the ability to detect on the nanometer scale. © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 21. Nano Intellectual Property Breadth of Claims 1. A barcode comprising a collection of one or more particle size distributions of quantum dots having characteristic spectral emissions. 2. A composition comprising: (a) a support; (b) an item of interest, wherein said item of interest is attached to said support; and (c) one or more particle size distributions of quantum dots having characteristic spectral emissions, wherein each of said quantum dots is associated with, attached to, or embedded within said support. © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 22. Nano Intellectual Property Breadth of Claims 1. A nanowire, comprising: (a) a first segment of a first material; and (b) a second segment of a second material joined to said first segment; wherein at least one of said segments has a substantially uniform diameter of less than approximately 200 nm; and wherein said nanowire is selected from a population of nanowires having a substantially monodisperse distribution of nanowires. 4. A nanowire, comprising: (a) a first segment of a first material; and (b) a second segment of a second material joined to said first segment; said nanowire having at least one electronic property that varies as a function of diameter of said nanowire. © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 23. Nano Intellectual Property Patent Application Prep and Prosecution • Does Small Make it Patentable? • How Broad is Too Broad? • Capturing Novelty Driven by Quantum Effects • Preparing for Future Interferences • Prophetic Inventing and Arm Waving • Managing the Invention Disclosure Process Perspective Challenging considerations make work interesting, and provide significant opportunity to add value. © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 24. Nano Intellectual Property Patent Application Prep and Prosecution 5nm Quantum Dot (viewed through a Family of Qdot particles transmission excited with single electron excitation source microscope) Perspective Same base technology can lead to many different Qdots used to label human patentability mitochondria cells answers. © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 25. Nano Intellectual Property Licensing & Tech Transfer • Impact of Government Funding • University Licensing – field of use – term – future development • Company to Company Licensing – same issues – others? © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 26. Nano Intellectual Property Tech Transfer - Funding Source Encumbrances • Statutes, regulations or contracts (policies) affect how IP is protected, used and transferred – Government – Academic institutions – Foundations – Industry – Venture capital • Know these encumbrances and understand their impact on your IP strategy – Ownership - use “due diligence” © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 27. Nano Intellectual Property Tech Transfer - Ownership • Bayh-Dole Issues – Often affect ownership and exclusivity expectations – Almost all have IP ownership clauses that defer to university IP Policies, which may trump – Transfer of IP to company needs sponsor’s approval • Jointly developed IP – Who will own it? – May lose 35 USC § 103(c) protection © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 28. Nano Intellectual Property General Themes • Business Plan dictates licensing strategy – Pure Licensing Model – Manufacturing Model Perspective – Service Provider Model Effective Nano IP • Don’t get boxed-In by license – Uncertainties management can – Time to Develop add tremendous – Field of Use shareholder value. • Ongoing IP asset management is critical © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 29. The End. © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved
  • 30. Disclaimers •These materials are not intended and should not be used as legal advice •If you need legal advice or an opinion on a specific issue or factual situation, please consult an attorney •Answering questions or the use of this material does not form or constitute an attorney-client relationship •These material are for information purposes only and should not be relied upon as a substitute for legal advice © 2004 Sterne Kessler Goldstein Fox PLLC, All Rights Reserved