skgf_presentation_ip issues in nanotechnology - a view from around the world_2004
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© 2004, Sterne, Kessler, Goldstein & Fox P.L.L.C.
IP Issues in NanotechnologyA View from Around the World
NSTI Nanotech2004
ByDavid Cornwell
Donald Featherstone
March 10, 2004 Boston, MA
21
Major Legal Issues
Overview of Intellectual PropertyPatentabilityOwnership/CollaborationInfringementOther Legal Issues
31
Intellectual Property
Patents (utility)Patents (design)Trade SecretsKnow-howCopyrightsTrademarksTrade Dress
41
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.
51
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 CodeCustomer Lists
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Copyrights
Protect expression of an ideaDoes not protect underlying idea
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Copyrights
Rights are protected upon creationThe right may be registeredFor works created after January 1, 1978, the term is the life of the author plus 70 yearsWorks Made for Hire
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Utility Patents
Prevent Others from– Making– Using– Selling– Offering for Sale– Importing (data?)
For a period of 20 years from the filing date
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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.
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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.
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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?
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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
131
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
141
NEMS & Life Sciences
DetectorsDrug deliveryLab-on-a-chip, etc.
151
• Electronicse.g., LCDs, Semiconductors, Memory
• Energye.g., solar cells, fuel cells, membranes
• Materialse.g., powders, polymers, gecko-feet
• Securitye.g., molecular level barcoding, chemical detection, sensors
• Nano Toolse.g., STMs, AFMs
Perspective
Pervasive Examples
The wide range of applications is one force driving the excitement surrounding nano.
161
General Ownership Rules
Inventor ownership is defaultCompany owns if employee is paid to inventContract usually addresses employeesWhat about the Janitor who invents on company time?What about Contractors?
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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.
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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?
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Technology Transfer
Bayh-Dole - Investment through government funding of non-profits– Encourages active commercialization of federally
funded inventions– Governments/agency retains license to practice
inventionUniversity license to small businesses
– Possible assignment with sponsor waiver– Detailed IP management and reporting
requirements
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Licensing StatisticsAmerican Universities
2000 2001 2002Institutions reporting 190 194 212Research expenditures ($B) 29.5 31.8 37# Invention disclosures 13,032 13,569 15,573# U.S. patent applications 6,375 6,812 7,741# Licenses and options 4,362 4,058 4,673Licensing income ($M) 1,260 1,071 1,267New start-ups 454 494 450
Source: Association of University Technology Managers: [email protected]
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Infringement Problem (Part I)
Identifying nanoproductsInventor invents nanoproduct (for use in macroproduct) and patents worldwideCopyist reads patent and makes knockoff macroproduct that incorporates nanoproductHow 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
221
Infringement Problem (Part II)
• United States • China • Japan • India • Germany • United Kingdom • France • Italy • Russia • Brazil • Mexico • South Korea • Canada
• Spain • Indonesia • Australia • Turkey • Iran • Thailand • South Africa • Netherlands • Taiwan • Argentina • Poland • Philippines • Pakistan
Highlighted countries are included in 2003 USTR “Special 301 Report”
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Regulation On Research
Ignorance breads fear - exaggerated fears of self-replication and "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
241
Will new legal rules be required for uniqueissues?
Too few may result in environmental and human safety hazards, make investors uncertain or forestall researchToo many may stagnate R&D, or promote "black market" research or drive research off-shore to unregulated localsAnalogies to other regulation/reform "hot topics“
– Medicines– Chemical and biological weapons– Nuclear energy/arms– Stem cell research– Cloning/genetic engineering– Bioengineered food
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Other Legal Issues
Will existing legal rules readily extend to nanotechnology?International Trade Laws/Regulations/TreatiesInter. Traffic in Arms Regs. (ITAR) - State Dept.
– Controls export of predominantly military "technical data", "defense articles" and "defense services“
– Numerous general and university exemptions to control categories
Export Admin. Regs. (EAR) - Commerce Dept.– Controls export of dual-use "technology" and "commodities“– Commerce control list - export licenses– Foreign filing license
Office of Foreign Assets Control (OFAC) - Treasury Dept.Environmental Laws
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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?
271
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?
281
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 aresusceptible 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 . . .”
291
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
301
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
311
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
321
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
331
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
341
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
351
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
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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)
371
China (Part I)
China is believed to be investing in nanotechnology research and developmentPatentability 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
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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)
391
With Special Thanks To
Timothy Doyle, Esq., at SKG&FTMI Associates International Legal Services (Tokyo, Japan)
– Yoshiyuki InabaTani & Abe (Tokyo, Japan)
– Yoshikazu TaniKim & 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