©2004 Foley & Lardner LLP
Territoriality In Nanotech Patents & Impact On US Manufacturing
Stephen B. MaebiusFoley & Lardner3000 K St. N.W. Washington D.C. 20007(202) [email protected]
©2004 Foley & Lardner LLP
Three Areas Of Patent Law Which May Impact US Manufacturing
Bayh-Dole licensing limitations
Domestic patent law restricting importation
Difficulties in obtaining international patent rights - may facilitate overseas production
©2004 Foley & Lardner LLP
Bayh-Dole Licensing Restrictions
Sec. 209(b): licensee must agree “that any products embodying the invention or produced through the use of the invention will be manufactured substantially in the United States”
many nanotech patents are and will be subject to this provision, but most will not
may be unclear whether end product was produced through use of the government-supported invention
©2004 Foley & Lardner LLP
Domestic Patent Law Restricting Importation
Sec. 271(g): prevents importation of a “product” made offshore by a process patented in the US
Problem: Bayer v. Housey held that information made by a biotech or nanotech process is not blocked (e.g., assay using nanoarray to discover new drug identity)
May encourage offshore research to discover end products not covered by US patents (Maebius & Wegner, NLJ, Dec. 24, 2001)
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Difficulties In Obtaining International Patent Rights Costs are prohibitive for many start-
ups
Not all countries have reliable enforcement systems
Failure to obtain rights in other countries may encourage overseas competitors
©2004 Foley & Lardner LLP
Conclusions Strong US patent system is encouraging
investment in nanotech start-ups Limited manufacturing of products at this
time; now mostly research jobs are being created
Domestic patent law reforms may help, but only to a limited extent
Need to continue push for global patent harmonization to make international patent rights affordable & effective for US nanotech businesses