SKGF_Presentation_IP Issues in Nanotechnology - A View from Around the World_2004

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SKGF_Presentation_IP Issues in Nanotechnology - A View from Around the World_2004

  1. 1. IP Issues in Nanotechnology A View from Around the World NSTI Nanotech2004 By David Cornwell Donald Featherstone March 10, 2004 Boston, MA © 2004, Sterne, Kessler, Goldstein & Fox P.L.L.C.
  2. 2. Major Legal Issues Overview of Intellectual Property Patentability Ownership/Collaboration Infringement Other Legal Issues 1 2
  3. 3. Intellectual Property Patents (utility) Patents (design) Trade Secrets Know-how Copyrights Trademarks Trade Dress 1 3
  4. 4. Trade Secrets In simple terms, a trade secret is something that is not generally known to the public and which gives the possessor of the information a competitive edge or market advantage. 1 4
  5. 5. Trade Secrets (Examples) Recipe for a Product (Coca Cola) Formula for a Material (leading cymbal manufacturer has kept the formula secret for 300 years) Computer Source Code Customer Lists 1 5
  6. 6. Copyrights Protect expression of an idea Does not protect underlying idea 1 6
  7. 7. Copyrights Rights are protected upon creation The right may be registered For works created after January 1, 1978, the term is the life of the author plus 70 years Works Made for Hire 1 7
  8. 8. Utility Patents Prevent Others from Making – Using – Selling – Offering for Sale – Importing (data?) – For a period of 20 years from the filing date 1 8
  9. 9. Utility Patents In the U.S. we have a “first to invent” system. Thus, evidence of “conception” is important and evidence of “reduction to practice” is important. In most countries, if two parties are attempting to obtain protection for the same subject matter, the “first to file” wins. 1 9
  10. 10. Utility Patents The scope of a patent is determined by the “claims.” An inventor of any claim is an inventor of the entire patent. Inventorship can have an important effect on ownership. 1 10
  11. 11. Patentability? Can something be patentable based solely on size? Does the patent office require proof that the inventor can actually make the invention? Does the patent office require a utility of the invention and is this a problem? Will patentability still be based on unpredictable results, new functionality and new applications of nanotechnology to solve problems? Can quantum or other physics/chemical properties be patented? 1 11
  12. 12. Patentability? (cont.) • Mechanical/chemical/electrical lines blur at the nano scale Quantum, Van der Waals, surface effects take – over • Perhaps focus on unique properties – Optical properties – Electrical properties – Opto-electrical properties – Structural properties Nanowires 1 12
  13. 13. Quantum Dots 5nm Quantum Dot (viewed through a transmission electron microscope) Family of Qdot particles excited with single excitation source Qdots used to label human mitochondria cells 1 13
  14. 14. NEMS & Life Sciences Detectors Drug delivery Lab-on-a-chip, etc. 1 14
  15. 15. 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 15
  16. 16. General Ownership Rules Inventor ownership is default Company owns if employee is paid to invent Contract usually addresses employees What about the Janitor who invents on company time? What about Contractors? 1 16
  17. 17. Thoughts About Strategic Alliances Always consider identification and allocation of IP rights. Always put agreement in writing. Do not assume that 50-50 split means that you are protected. 1 17
  18. 18. Example A If X and Y agree that each owns 50% of a patent Can X grant a license to Z? If so, does X share royalties with Y? 1 18
  19. 19. Technology Transfer Bayh-Dole - Investment through government funding of non-profits Encourages active commercialization of federally – funded inventions Governments/agency retains license to practice – invention University license to small businesses Possible assignment with sponsor waiver – Detailed IP management and reporting – requirements 1 19
  20. 20. Licensing Statistics American Universities 2000 2001 2002 Institutions reporting 190 194 212 Research expenditures ($B) 29.5 31.8 37 # Invention disclosures 13,032 13,569 15,573 # U.S. patent applications 6,375 6,812 7,741 # Licenses and options 4,362 4,058 4,673 Licensing income ($M) 1,260 1,071 1,267 New start-ups 454 494 450 Source: Association of University Technology Managers: autm@autm.net 1 20
  21. 21. Infringement Problem (Part I) Identifying nanoproducts Inventor invents nanoproduct (for use in macroproduct) and patents worldwide Copyist reads patent and makes knockoff macroproduct that incorporates nanoproduct How do enforcing agents (e.g., customs officials) recognize that macroproduct infringes patent for nanoproduct? Inventor might take the position: Protect future inventions under trade secret laws – 1 21
  22. 22. Infringement Problem (Part II) United States Spain • • China Indonesia • • Japan Australia • • India Turkey • • Germany Iran • • United Kingdom Thailand • • France South Africa • • Italy Netherlands • • Russia Taiwan • • Brazil Argentina • • Mexico Poland • • South Korea Philippines • • Canada Pakistan • • Highlighted countries are included in 2003 USTR “Special 301 Report” 1 22
  23. 23. Regulation On Research Ignorance breads fear - exaggerated fears of self- replication and quot;gray goo problem“ Macro-scale robots have not taken us over, why will nano- – bots? Like biotechnology, minimize catastrophe risks Restriction on development of organisms that cannot readily – survive outside of the lab Ban or limit creation of self-replicating organisms/devices – Limit/more strictly regulate research into military applications – Government vs. private/self regulation – 1 23
  24. 24. Will new legal rules be required for unique issues? Too few may result in environmental and human safety hazards, make investors uncertain or forestall research Too many may stagnate R&D, or promote quot;black marketquot; research or drive research off-shore to unregulated locals Analogies to other regulation/reform quot;hot topics“ Medicines – Chemical and biological weapons – Nuclear energy/arms – Stem cell research – Cloning/genetic engineering – Bioengineered food – 1 24
  25. 25. Other Legal Issues Will existing legal rules readily extend to nanotechnology? International Trade Laws/Regulations/Treaties Inter. Traffic in Arms Regs. (ITAR) - State Dept. Controls export of predominantly military quot;technical dataquot;, quot;defense articlesquot; and quot;defense – services“ Numerous general and university exemptions to control categories – Export Admin. Regs. (EAR) - Commerce Dept. Controls export of dual-use quot;technologyquot; and quot;commodities“ – Commerce control list - export licenses – Foreign filing license – Office of Foreign Assets Control (OFAC) - Treasury Dept. Environmental Laws 1 25
  26. 26. International Patentability (Part I) Can something be patentable based solely on • size? Does the patent office require proof that the • inventor can actually make the invention? Does the patent office require a utility of the • invention and is this a problem? Will patentability still be based on unpredictable • results, new functionality and new applications of nanotechnology to solve problems? 1 26
  27. 27. International Patentability (Part II) Do they differ for nanotechnology? Statutory subject matter? – Do special examination procedures exist? Are there special examiners for nanotechnology? What is the pendency for a nanotechnology patent application? How does this differ from the pendency in other technologies? 1 27
  28. 28. Patentability Standards Subtle differences that may be important: United States “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter . . .” Europe “European patents shall be granted for any inventions which are susceptible of industrial application . . . The following in particular shall not be regarded as inventions . . . discoveries . . .” Japan “Any person who has made an industrially applicable invention may obtain a patent therefore . . .” 1 28
  29. 29. Japan Japanese National Science and Technology Plan for 2001-2005 Plans to develop nanotechnology – Part of effort to revitalize economy – Investments by Japanese government: $600M (2001) $800M (2002) $900M (2003) – Companies interested in nanotechnology: NEC, – Hitachi, Sony 1 29
  30. 30. Japan (Part II) Patentability Standards Patent application must explain utility of invention – “Size” may be patentable if unpredictable/unexpected – results Method for making nanodevice likely is patentable – Patent Office Initiatives Special examination group for nanotechnology created – Have guidelines for assessing patentability of business – methods Anticipated pendency: 21-30 months – Examination can be expedited in same manner as for – other technologies 1 30
  31. 31. South Korea (Part I) In 2001, Korean government initiated 10-year plan to develop nanotechnology Infrastructure for developing nanotechnologies to be in place – by 2005 (KAIST (university) installing nanotech fabrication center) 10 nanotechnologies to be developed by 2010 – Budget for plan: $1.2B – 2003 investments by South Korean government: $177M – Companies interested in nanotechnology: Samsung Electronics, Samsung SDI, Hynics, LG Electronics 1 31
  32. 32. South Korea (Part II) Patentability Standards Patent application must explain utility of invention – “Size” may be patentable if unexpected effects or – prior art could not realize disclosed size (application must explain how size realized) New style of claiming being developed to allow, for – example, describing physical/chemical properties by a distribution function 1 32
  33. 33. South Korea (Part III) Patent Office Initiatives Nanotechnology applications typically assigned to – group B81 or B82 2000 (3 nanotech applications); 2002 (30 nanotech – applications) Anticipated pendency: 20-24 months – Examination can be expedited in same manner as – for other technologies Method for making nanodevice likely is patentable – 1 33
  34. 34. South Korea (Part IV) Ownership Issues Much current investment in nanotechnology is through – university systems where ownership between university and researcher is not always clear Remuneration Issues Recent Japanese court decisions likely to impact Korean – court Decisions involved compensation of inventors under – “work-for-hire” In Japanese decisions, awarded inventors large sums of – money 1 34
  35. 35. Taiwan (Part I) Taiwanese government is forming Association for Promotion of Industrial Application of Nanotechnology for research institutes and private enterprises Universities have established nanoscience centers – Private enterprises have invested in nanotechnology – Patentability Standards Patent application must explain utility of invention – “Size” likely is patentable so long as novelty and inventive step – shown 1 35
  36. 36. Taiwan (Part II) Patent Office Initiatives No nanotechnology examination group has been – created Anticipated pendency: 12-24 months – Examination can be expedited in same manner as – for other technologies (after patent application has published) 1 36
  37. 37. China (Part I) China is believed to be investing in nanotechnology research and development Patentability Standards Application must prove with data that invention has – been made Patent application must explain utility of invention – “Size” likely is patentable so long as novelty and – inventive step shown 1 37
  38. 38. China (Part II) Patent Office Initiatives No nanotechnology examination group has been – created Anticipated pendency: 36 months – No procedure for expedited examination of – nanotechnology (or other fields) 1 38
  39. 39. With Special Thanks To Timothy Doyle, Esq., at SKG&F TMI Associates International Legal Services (Tokyo, Japan) Yoshiyuki Inaba – Tani & Abe (Tokyo, Japan) Yoshikazu Tani – Kim & Chang (Seoul, Korea) Chun Yang – Seok-Chan Baek – Andrew Choung – Kang & Lee (Seoul, Korea) Y.S. Kang – Saint Island International Patent & Law Offices (Taipei, Taiwan) Hong-Yue Du – CCPIT Patent and Trademark Law Office (Beijing, China) Chuanhong Long – 1 39

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