Issue



Simple steps make complex patenting system manageable


01/01/2006







For embryonic technologies such as nanotechnology, intellectual property (IP) has become intricately complicated, like building at the nanoscale. Nanotechnology patent filings continue to proliferate and are extremely competitive, which adds to the complexity. These days, one business commentator will complain that patents have become too powerful. The next commentary will then express dismay that the system is too weak. We hear concern, if not angst, about nanotechnology patent thickets, although patent thickets have been around for a long time.

Despite all the rigmarole over patents, the patent system has become central to nanotechnology. This is particularly true for small, emerging companies for which IP assets are a large part of corporate value, particularly if they can establish IP dominance. U.S. leadership in nanotechnology is directly linked to its complex but effective Bayh-Dole system for technology transfer to the marketplace through patent licensing to small companies. In this complex environment, businesses need answers for patent, licensing and deal issues. To help, we provide some practical tips on patent strategy and execution, as well as some updates.

Patent strategy. At least two strategic themes emerge for any patent strategy. First, aggressively generate base corporate value by regular buildup of the nanotechnology portfolio, which will provide the company with assets valued by the market. Establish legally sound IP domination. Second, do not forget to add seasoning; generate additional value with targeted, strategic filings. For example, file patent applications before beginning work on a joint development agreement to protect the company as others gain access to the technology.

If your company is based on patent licensing under the Bayh-Dole system, become knowledgeable about Bayh-Dole. The system provides an IP base for companies to exploit, but companies must know the limits. For example, understand domestic manufacturing requirements, reporting compliance and government rights in the invention. Companies working with universities should assume control of the patent prosecution as early as possible.

Broad patent prioritization should be carried out. For example, patents should be crudely ranked for corporate value (like the latest top 20 sports poll). Do not blindly file and maintain patent applications, but proactively map applications against product development plans (and competitors’ products) on a country-by-country basis so that unnecessary filings can be pruned.

Avoid being blindsided by monitoring for competitive patents. For example, valuable technology insights can be gleaned from competitive patents. Licensing and joint development opportunities can be uncovered. Another compelling reason: Investors want it.

Execution. The best patent strategy may not mean much without practical execution. Managing a patent portfolio is not easy, as the task is filled with details and deadlines. Recognize that patenting is a highly specialized process and requires help from outside counsel.

Companies should file all patent applications, including provisional patent applications that are strong enough to contain the essence of the invention, using solid attorney input. Weak provisional filings represent lost opportunities to generate corporate value. They can damage later attempts to protect the technology, and can undermine the IP value. Also, companies should execute honestly with the U.S. Patent and Trademark Office (PTO) to avoid later charges of inequitable conduct.

Patent updates. The PTO continues to develop a more rigorous, quality-based examination system. This includes creation of a nanotechnology classification system, 977. The number of patents in 977 now stands at more than 2,600. The first PTO-classified nanotechnology patent to issue was filed in 1974 (No. 4,107,288). Looking to the future, the PTO granted Zyvex a 977 patent on self-replicating manufacturing stations (No. 6,510,359). IP figured prominently in recent transitions at NaturalNano and Quantum Dot.

Patenting requires hard work to reap the rewards of the investment. When Nobel Laureate Richard Feynman kicked off nanotechnology in 1959 with his “Room at the Bottom” speech, he certainly did not have in mind the work required by the modern U.S. patent system - he talked more about having fun. Feynman envisioned that scientists would compete to build nanostructures motivated by human qualities other than money. However, he also recognized the motivating role of money and established a financial award for building the first small-scale motor.

In the same way, patents provide an economic incentive to build at the nanoscale. Nanotechnology’s creative genius is a fountainhead of the U.S. economy. Through patents, companies should protect the genius behind these nanotechnology miracles.

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Stephen Maebius is a partner and Steven Rutt is an associate at Foley & Lardner LLP. They can be reached at smaebius@foley.com and at srutt@foley.com.