NEW YORK, April 22 – LAWFUEL – The Law News Network – A gold-rush mentality has taken hold in nanotechnology, and patents are the precious resource being hoarded. As of late March 2005, 3,818 U.S. nanotechnology patents had been issued with
another 1,777 patent applications awaiting judgment. But entrepreneurs’
ability to turn their patents into cash may be limited by crowded claims that
overlap with one another, according to a new report from Lux Research entitled
“The Nanotech Intellectual Property Landscape.” The report was developed in
partnership with patent attorneys in the nanotechnology practice at law firm
Foley & Lardner LLP.
“Nanotech researchers worldwide are steadily filing patents in the hopes
of creating ‘tollbooths’ for future products incorporating nanomaterials,”
said Lux Research Vice President of Research Matthew Nordan. “Nanomaterials —
the ‘building blocks’ of nanotechnology, like carbon nanotubes and quantum
dots — have seen particular focus. Our comprehensive patent review shows that
the patent landscape for these materials is complex and fragmented. Because so
many patents have been filed relating to nanomaterials, and so many of them
seem to overlap, companies that want to use these building blocks in products
will be forced to license patents from many different sources in order to do
To analyze the landscape of nanotechnology IP, Lux Research and Foley &
Lardner systematically reviewed 1,084 U.S. patents – representing 19,485
claims — that relate to five nanomaterials: 1) dendrimers, 2) quantum dots,
3) carbon nanotubes, 4) fullerenes, and 5) nanowires. The patents were
reviewed manually on a claim-by-claim basis; no software automation was used.
The team broke down patents for each nanomaterial platform by application and
rated them according to how much “white space” remains for new claims and how
entangled existing patents look, using a rigorous, quantitative methodology.
The report concludes that:
* Dendrimers pose the biggest question mark, scoring low on white space
and freedom from entanglement for all commercially significant
applications. A large number of relevant claims have been assigned from
pioneer Dow to one start-up company, Dendritic Nanotechnologies.
* Quantum dots have particularly knotty entanglement for general claims
that cover the materials themselves and not any specific application.
This fact casts doubt on the commercial value of quantum dot IP.
* Carbon nanotube patents look messy in electronics, but promising in
energy and healthcare and cosmetics. The common assumption that carbon
nanotube patents are both numerous and overlapping across all important
application categories is incorrect.
* Fullerenes look relatively unentangled, but crowded with abandoned
patents. The good news: Fullerenes show less entanglement than the
previous three categories. The bad news: Many patents issued may be
useless — inventors have given up on a third of them by failing to pay
patent maintenance fees.
* Nanowire patents number few and seem distinct — but Nanosys looms
large. Nanowire patents offer a good opportunity to license the most
important ones on an exclusive basis without worrying about IP
entanglement — so good that start-up Nanosys has already attempted to
“Looking into the future, while some nanotech patent litigation is
inevitable, those who have their own patents will have some leverage with
which to avoid a self-destructive IP war,” said Stephen B. Maebius, chair of
the Nanotechnology Industry Team at Foley & Lardner LLP. “The stage is set for
a wave of cross-licensing agreements by start-ups, and bundles of IP for
specific applications licensed by groups of large corporations. We advise
companies filing nanotech patents to go for claims of intermediate scope —
not just broad claims — recognizing that the courts might not uphold all
broad claims, as has been the case with a number of biotech patents. Firms
licensing nanotech IP should define fields of use with great care, given that
most nanotech inventions cut across multiple industries and may find
commercial applications in diverse fields.”
The report and its underlying data set are available immediately to
clients of Lux Research’s Nanotechnology Strategies advisory service. For
information on how to become a client, contact Steve Mills at (646) 723-0163.
About Lux Research:
Lux Research is the world’s leading nanotechnology research and advisory
firm. We help our clients make better decisions to profit from nanoscale
science and technology, tapping into our analysts’ unique expertise and
unrivaled network. Our clients include top decision makers at large
corporations, portfolio managers and analysts at leading financial
institutions, CEOs of the most innovative start-ups, and visionary public
policy makers. To get connected and for more information, visit
About Foley & Lardner LLP:
Foley & Lardner LLP is a provider of legal counsel to global companies.
The firm’s experience encompasses a full range of corporate legal services.
Foley & Lardner’s attorneys understand today’s most complex business issues
including corporate governance, securities enforcement, litigation, mergers
and acquisitions, intellectual property and IP litigation, labor and
employment, and tax. The firm offers total solutions in the nanotechnology,
life sciences, automotive, e-business and information technology, energy,
financial services, food, health care, insurance, golf and resort services,
and sports industries. Our Web site can be found at http://www.foley.com .
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