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SKGF_Presentation_Nanotechnology IP Licensing Think Big, But Keep Your Feet On The Ground_2005

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  • 1. Nanotechnology IP Licensing: Think Big, But Keep Your Feet on the Ground! LES 2004 Winter Meeting: Workshop 3 By Donald Featherstone, Director February 12, 2004 San Francisco, CA © 2004, Sterne, Kessler, Goldstein & Fox P.L.L.C. 226114v4.ppt
  • 2. Topics The PTO's handling of nanotechnology – The disruptive nature of nanotechnology – The pervasive nature of nanotechnology NT Licensing observations 1 1
  • 3. The PTO's Handling of NT 21st Century Nanotechnology R&D Act – $3.7 billion for nanotechnology R&D for FY 2005-2008 – FY 2005 PTO slated to keep filing fees, increased budget USPTO Nanotechnology Customer Partnership – About 1500 nano-related patents issued through fall 2003 – Examiner education – No new tech centres or classification planned – will revisit – 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, construction materials), 438 (molecular engines and computers), etc. 1 1
  • 4. Nanotech Is Disruptive New inventions – Quantum dots having characteristic spectral emissions (nano-barcodes) – Gold nanoparticles studded with DNA for genetic-sequence testing – Nanospheres – exposing nanoparticles to infrared radiation for localized heating 1 1
  • 5. Quantum Dots Qdots Used to Label Human Perspective Mitochondria Cells The Science is Real. And, products are hitting the market. 1 1
  • 6. NEMS & Life Sciences Detectors Drug delivery Lab-on-a-chip, etc. 1 1
  • 7. Protection Challenges From Partnership Meeting, PTO to focus on: – Enablement – Inherency – Predictability or lack thereof – Presence or absence of working example – Breadth of claims – Quantity of experimentation needed Standard examination guidelines will apply – One patent law for all technologies – Patentability usually hinges on discovery or improvement of a new functionality of device/manufacture/material 1 1
  • 8. Licensing Considerations Displacement of existing technologies by creation of – New product lines – In new fields of use Patent life verses commercialization horizon – No real solution Draft to implement/mirror the business plan 1 1
  • 9. Nanotechnology Is Pervasive Nano is not an industry per se Nano technology is pervasive, a confluence of science disciplines Same issues that plagued biotech likely to impact nanotech – Quick to emerge, timeline uncertain – Potential FDA approval – Need good environmental profile Like chemical/electrical/mechanical hybrid technology – More likely an enabling and complementary technology 1 1
  • 10. Pervasive Examples • Security e.g., molecular level barcoding, chemical detection, sensors • Electronics e.g., LCDs, Semiconductors, Memory • Materials e.g., powders, polymers, gecko-feet • Energy e.g., solar cells, fuel cells, membranes • Nano Tools Perspective e.g., STMs, AFMs The wide range of applications is one force driving the excitement surrounding nano. 1 1
  • 11. Protection Challenges Does size matter? – Surface effects – Quantum and Van der Waals' forces Usual players: Utility, novelty, unobviousness, unexpected results Law of relative dimensions – Not patentable absent different functionality or change in property 1 1
  • 12. What May Be Protectable New nano scale devices and materials 1. New methods of manufacturing 2. New nano-enabled functionality and methods of use 3. Improvements of devices, materials and methods 4. Integration of new or improved nano materials into micro or macro systems 1 1
  • 13. What’s Less Protectable Higher levels of integration, minimization Higher performance Lower cost through mass production 1 1
  • 14. Licensing Considerations Bench-top fabrication - does small translate into: – Reduced capital investment? – Less development time? – Less expensive? – Easy to copy? Know-how more portable – IP remaining barrier to entry 1 1
  • 15. NT Licensing Observations Research Funding Sources Impose Encumbrances License Income structures Performance requirements 1 1
  • 16. Research Funding Sources Impose 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” 1 1
  • 17. 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 1 1
  • 18. License Income Structures Minimum annual royalty/maintenance fees – Deductible from running royalties – Timing to market may be critical Milestone Fees following IPO’s – Timing to market may be critical 1 1
  • 19. License Income Structures (cont’d) Equity investment – Grants of common stock – Participation in private equity offerings Combinational products – fractional royalty calculus Wide range of sublicensing royalty percentages back to L’or Royalty break on L’ee sales to US Government 1 1
  • 20. Performance Requirements Key Funding – R&D related to licensed IP – Patent prosecution – limited or world wide? Reporting – R&D plans covering major tasks – Periodic progress reports Timetables to – Develop working models or meet specific technical milestones – Make first commercial sale – Enter letter of intent - other contract(s) for commercialization Meet annual new sales goals 1 1
  • 21. Questions? 1 1
  • 22. Who is SKGF? Intellectual property firm located in Washington DC Specializing in the creation, protection and transfer of IP Create and protect IP portfolios for many start-ups and small companies in an early stage of their development Representing companies and universities, domestic focus 1 1
  • 23. Who is SKGF? (cont’d) Evaluate IP portfolios for clients who acquire or underwrite such early stage entities Provide IP-related advice for clients seeking partnerships or collaborations with other entities (e.g., tech transfer) Provide high value counseling, legal opinions, and licensing allowing our clients to proceed into potentially riskier and more profitable areas of business. 1 1
  • 24. 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 and 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 1 1