A publication of the Foresight Institute
Enayati, an attorney with Venture Law Group, answers Foresight
members questions on intellectual property issues in
In the last issue of Foresight Update, I discussed the mechanics of what changes are imminent in US patent law under the Uruguay Rounds Agreement Act (or the GATT Implementation Act). Now that you have had a chance to mull over the nuts and bolts of those changes, I want to highlight some important issues raised by the new laws that specifically concern the nanotechnology disciplines.
20-year Term. As you may recall, the present US patent system grants patent rights to the first inventor for a period of 17 years measured from the date the patent issues. The US patent system also includes some mechanisms for filing a patent application on DAY1 (e.g., July 1, 1990), and then subsequently adding new data and information by filing a second patent application (known as a continuation-in-part application) on DAY2 (e.g., July 15, 1991), while preserving the original DAY1 filing date. It is possible to file an entire string of patent applications in this manner so that the patent that eventually issues contains all or a portion of the first application, and all or a portion of subsequent generations of that application. This could potentially continue for years. In a first hypothetical, let's say the first application is filed on July 1, 1990, a final continuation-in-part application is filed on July 1, 1994, and a patent issues on August 1, 1995. In this first hypothetical, and under the current US patent law, the patent holder is entitled to a maximum of a 17 year term, beginning the day the patent issues (i.e., August 1, 1995) and ending on August 1, 2012.
Now, in a second hypothetical, suppose the last application is filed on July 1, 1995 (as you may recall, the new 20-year patent term applies to patent applications filed on or after June 8, 1995), and issues as a patent on June 1, 1996. The patent holder in that instance would obtain a patent with a maximum term of 20 years as measured from July 1, 1990 (the date of the first US patent application filing date). Since patent rights are not enforceable until the patent issues (that does not change under the new law), the patent holder has lost three years off of the patent term (i.e., 17 years under the current law less 14 years under the new law).
So what does this mean? In a research setting, such as at a university, there is a tremendous amount of incentive, if not actual pressure, for scientists to publish the results of their research. As a consequence of this "publish or perish" system, in conjunction with the heightened awareness at most research institutes of the tremendous monetary value royalties bring to the institution based on proprietary technology developed by their faculty and staff, patent applications historically were filed on early-stage research. The idea was to file early, then take advantage of the patent system by filing continuation-in-part applications adding data and other information to the application to make any resulting patent a fiscally, if not commercially valuable resource.
However, if patent terms now are to be calculated from the earliest US priority date for that patent, inventors who file early may lose valuable time at the enforcement end. The decision whether or not to file a patent application will require a balancing of even more competing interests: scientists' interests in making their work public versus institutes' interest in obtaining broad patent rights that will bring significant royalties for as many years as possible. Because patent applications in each discipline have different pendency periods in the Patent Office (e.g., several years for biotechnology patents, even longer for "pioneering patents," and a couple of years for mechanical, most chemical, and electrical patents), the type of technology involved also will be a factor in deciding the timing for filing a patent application. Whether this will "promote the arts and useful sciences," as mandated by the US Constitution, or ultimately stifle early dissemination of such "useful sciences" remains to be seen once the new law has been in effect a few years.
Provisional patent applications. In an attempt to compromise with institutions, due to the perceived inequities formed by the new patent term, as described above, the new patent law creates a new type of patent application: the "Provisional Patent Application." This new application is touted as an inexpensive alternative to a "complete" patent application, and is expected to have a filing fee of as little as $75 (the filing fee for a complete application is at least $365 ). As represented by the US Patent Office, an applicant may file a Provisional Application to preserve an early filing date, and will have up to 12 months from that filing date within which to file both a complete US application and any foreign applications, effectively deferring the full costs of patent filing for 12 months, without losing any time off the 20 year term.
Unfortunately, as with most bargains, Provisional Applications are not such a great bargain. As a starter, there is a requirement that the Provisional Application satisfy all of the statutory requirements of enablement and best mode (35 U.S.C. § 112). In fact, the only significant advantage of the Provisional Application is that it may be filed without a single claim. However, since the claims define the invention, and the application must contain sufficient disclosure to enable the claimed invention, most applicants will need to draft at least one claim just to determine whether the rest of the application satisfies the statute! Thus, an applicant will need to spend nearly the same amount in patent attorney fees to file a valid Provisional Application as that applicant would spend to file a complete application at the outset.
It is a rumor that some law firms are offering to file Provisional Applications for low, flat rate fees (I have heard the number $1,000 more than once in connection with such applications). However, if the Provisional Application is not carefully reviewed to verify that it satisfies the substantive statutory requirements, any patent that may subsequently issue and that relies on the priority date of that Provisional Application, risks significant enforcement issues down the road. Although Provisional Applications may be a useful tool in patent portfolio management, beware that such applications also may be significant traps for the unwary and may signficantly undermine the strength of an issued patent relying on such an application.
In the nanotechnology disciplines, the change in US patent law highlights an issue that most in the field grapple with on a fairly routine basis: the conflict between protecting proprietary information and dedicating such information to the public domain; i.e., patent versus publish. The new law presents even more challenges to those inventors making such decisions. Much, but certainly not all, of nanotechnology research involves ground-breaking or pioneering technology. However, the ability to obtain significant proprietary protection for such technology under the new law will present new challenges. Fundamental to the question of when to protect is the question of how to protect. I plan to address that issue in the next Law in Technology column. Your comments on these topics always are welcome.
© 1995 E. Enayati
Elizabeth Enayati is an attorney with Venture Law Group, 2800 Sand Hill Road, Menlo Park, CA. 94025 She can be reached at tel (415) 233-8459, fax (415) 233-8459, or by email at email@example.com.
The information in this column is not to be construed as legal advice and is not necessarily the view of Venture Law Group.
"Legal Problems of Nanotechnology: An Overview,"
by Frederick A. Fiedler and Glenn H. Reynolds, Southern
California Interdisciplinary Law Journal, Vol.3, No.2, pp.
Fiedler and Reynolds have produced the first law journal article examining nanotechnology issues, including some early thoughts on the direction regulation might take. Reynolds, a law professor at University of Tennessee, has been following nanotechnology issues for many years through his involvement with the National Space Society. Fiedler, an MD and law student, brings a strong medical perspective to the piece.
The authors start with a layman's introduction to the technology itself, then explain the dangers of both under- and over-regulation. Readers of Foresight Update will already be familiar with potential dangers caused by abuse or accidents; we may be less aware of the dangers of over-regulation, partly because these are harder to see.
For me, the paper's most vivid point is its explanation that "the British Explosives Act of 1875, which forbade all private rocketry experimentation, caused British rocketry enthusiasts to fall behind others--like American Robert Goddard and the German Wernher von Braun--with dramatic results." Dramatic, indeed--now there's an understatement. The lesson for nanotechnology: to the extent regulation is needed, implementing it in one country is not the answer.
"As Cass Sunstein notes, 'Stringent regulation of new risks can increase aggregate risk levels'...The reason is that new technologies, which in general tend to be safer than old technologies, are often subjected to more stringent regulation simply because they are new. The result is often the perpetuation of riskier (but politically more powerful) existing industries at the expense of safer new technologies that do not have a built-up base of political support."
Potential medical applications and related regulatory issues receive extensive attention: will medical nanotechnology treatments be viewed as drugs or devices? Medical misuse is discussed, along with some of the more radical medical applications such as very long-term life extension.
On intellectual property issues: "In a world in which nearly any object could be manufactured on-site from inexpensive materials, the only really worthwhile property rights may be in intellectual or cultural property. Even if objects can be 'home-grown' using general purpose manufacturing devices employing nanotechnology, the 'plans' for constructing such objects will still be valuable. We may see a near-complete separation of design and manufacturing, at least in some fields. If that is the case, intellectual property in software, designs, and so on will become far more valuable, and criminal sanctions against, say, 'counterfeit' designer goods are likely to be much greater. Likewise, unique objects like oil paintings, handcrafts, and so on may become far more valuable even if indistinguishable from machine-made duplicates, simply because they are scarce."
Many other effects of nanotechnology are touched on in this high-level overview- -far more than can be covered here. We suggest a visit to your nearest law library.
Chemical & Engineering News (April 17) covered work
by Peter Schultz and Paul McEuen at UC Berkeley combining
proximal probe techniques with molecular self-assembly: making an
AFM tip into a precision catalysis device by coating the tip with
platinum. C&EN points out that this is a step toward
"nano manufacturing": "carrying out highly
localized chemical catalysis to create high -resolution
structures on a surface." A quote from IMM's Eric Drexler
terms the work "fascinating."
[Editor's note: For more on the work of Schultz and McEuen, see Update 22.]
NPR's popular "All Things Considered" radio program discussed work done by a group of scientists studying friction at the atomic scale. They reported that friction operates very differently at the atomic scale. (For a theoretical description of the differences between friction at the macroscale vs. at the nanoscale, see Nanosystems.)
Receiving wide coverage were speculations on "the technological breakthrough which will have the biggest impact in the next 50 years" forecasted by the National Engineers week "All-Stars," a diverse team of men and women which included corporate executives, astronauts, elected officials, heads of government agencies, President Clinton's science advisor, and engineers in nontraditional fields like sports and entertainment. The All-Stars were surveyed in conjunction with National Engineers Week. From the NewsEDGE wire service:
"Nanotechnology and biotechnology may, according to these experts, rival the continuing communications revolution in shaping day-to-day life in the first half of the 21st century...When it came to predicting the next major technological achievement, both J. Winston Porter, president of the Waste Policy Center and the former head of the U.S. Environmental Protection Agency's efforts on solid waste, and Wesley Harris, associate administrator for aeronautics with NASA, found common ground in nanotechnology. They expect these tools, working on the molecular scale, to perform sophisticated new tasks, especially in medicine."
A World Wide Web essay on nanotechnology was published as part of the mid-April online magazine HotWired. Author Chris Peterson was interviewed online on April 19 by HotWired readers. The publication has given permission for Foresight to post this essay at the Foresight Web site.
Newsweek's May 1 issue included a column by Steven Levy on Adleman's DNA "computer," closing with "While we're struggling to assimilate the effects of the breakthroughs we've already seen, those damn innovators keep coming up with new ones. If biology and computers truly join forces, though, the changes will probably be so pervasive that no one will be able to escape them. The speculation ranges from supermedicines to nanotechnological 'assemblers' that rearrange atoms as easily as Lego blocks. So brace yourselves..."
Coverage in the UK included articles in The Times (Feb. 27), The Independent Magazine (March 18), and The Guardian (May 4).
A timing prediction from Government Technology (March): fully-implemented nanotechnology will be widespread in 40 years. Longer than Foresight's guesses, but close enough for government work?
Computation-rich, adaptive, self-organizing nanotechnology products are described in The Futurist's January-February article on the "nanoplastics" design work of Prof. Charles Owen and students at the Illinois Institute of Technology. This is a picture of the effects of nanotechology on daily life.
And in a belated mention, Robert Malone, Editor of Managing Automation, d escribed nanotechnology in his December column entitled "Honey, I Shrunk the Factory," stating "It is very difficult to argue with these future directions given what has already happened and what is being tested in labs around the world. We might do well to start thinking of the impact on jobs, design and manufacture, distribution, and business in general. Small manufacturing units with enormous intelligence could change the way we live, work, and organize our industries. It could also impact energy use, the need for transportation, and communication technology. What used to be bread and butter for science fiction is now becoming grist for the mills of reality."
Speaking of fiction: The Diamond Age, a nanotechnology-based novel by Neal Stephenson, is receiving positive reviews in the press and by Foresight members.
Finally, taking the prize for oddest media mention is Reed's Security Reporter (March), which credits nanotechnology for making possible a new type of lock now on sale.
We realized recently that it is getting to be a challenge even
to keep track of all of those who should be thanked in each
issue: there are so many now. Here are a few not credited
elsewhere in this issue:
Thanks to Senior Associates Marc Arnold and Chris Portman for making the Feynman Prize in Nanotechnology possible this year.
Thanks to Jim Lewis and James Gallagher for being the first to donate to the Web Enhancement Project.
Thanks to Elaine Tschorn, our new contractor, for so rapidly straightening out Foresight's bookkeeping. We're very glad to have her with us. Thanks to Gayle Pergamit for recruiting Elaine.
Thanks to Niehaus Ryan Haller Public Relations for their ongoing assistance to Foresight's efforts to educate the public via the media. Just now, this work is focused on the fall conference and the Feynman Prize.
Thanks to Bob Schumaker for his help in getting our database to handle accent marks in foreign addresses correctly.
Thanks to Global Business Network for bringing their members to up to date on nanotechnology at their Annual Forum.
Thanks to the ever-larger group of Web participants and experts who are advising Foresight's Web Enhancement Project. Thanks to Senior Associates Jim Gallagher and Jim Lewis for kicking off the fundraising effort on this project.
Thanks as always to the many members who help make sure that we see as many relevant articles and other forms of information as possible: Serge Avila, Jake Carter, Jeff Cavener, William Cooper, David Cornell, Brian Cox, Allan Drexler, Dave Forrest, Tom Glass, Jones Hamilton, Fred Hapgood, Aleksander Herman, Graham Houston, Stan Hutchings, Seán Jackson, Anthony Johnson, Marie-Louise Kagan, Stephen Kramer, Kevin Lacobie, Tom McKendree, Scott MacLaren, Joy Martin, Russ Mills, Anthony Napier, Bryn Ostby, Mark Reiners, Jim Rice, Steve Vetter, Kai Wu.
In our last issue, we suggested contacting Future Quest for videotape copies of their program on nanotechnology. Now we learn from member Jake Carter that these tapes will not be ready for months. The company suggested that interested members ask their local public television station to air the show again, and tape it during that showing. Or, you can wait a few months and contact Future Quest, Producers Entertainment Group, 9150 Wilshire Blvd, Suite 205, Beverly Hills, CA 90212 (note corrected address).
Industrial Robot, a publication from the UK, described nanotechnology work in the UK and France in an article titled "Nanotechnology Update" (Vol. 21, No. 2, pp. 33-34). Foresight and our Feynman Prize were covered as well. However, it's clear that in Europe the word nanotechnology is predominantly used to describe top-down technologies which are not molecularly precise, along with some proximal probe work. These primarily top-down groups include the LINK Nanotechnology Programme (part of the UK's National Initiative on Nanotechnology), the Nanotechology Forum, and France's Club Nanotechnologie. We're looking into these and will have more coverage in later issues.
The following is an excerpt from the January 31, 1995,
testimony of Ron Brown, Secretary of Commerce, before Senate
subcommittee on Science, Technology and Space:
As device miniaturization progresses toward 2015, we will soon need to build and characterize devices whose typical size is just a few atomic diameters. There currently are profound limitations to our ability to measure, fabricate, characterize, and understand atomic scale devices. NIST [National Institute of Standards and Technology] has begun a new nanotechnology initiative specifically to enhance our current capabilities to make and study nano-structured materials.
On March 16, 1995, Dr. Scott Pace testified before the
House Committee on Science's Subcommittee on Space and
Aeronautics. Dr. Pace is chair of the National Space Society's
Policy Committee. Excerpts follow:
"The National Space Society is dedicated to the creation of a spacefaring civilization and the establishment of communities beyond the Earth. Our mission is to promote change in social, technical, and political conditions when people will live and work in space. We believe that the technologies and industries created on the space frontier will be of benefit to all humans in the coming century. We further believe that opening the space frontier will create new opportunities for human life, liberty, and the pursuit of happiness...
"The National Space Society does not believe that the settlement of the Solar System can be accomplished with any single government program or even the cooperative efforts of many governments. Rather, space development and settlement will occur most effectively when the economic, technical, and social conditions allow individuals and non-governmental organizations (such as private firms and non-profits) to move into space on their own...
"Another exciting area of technical potential is that of nanotechnology... Molecular manufacturing or the manipulation of matter at the level of individual atoms may allow us to go further and the same interplanetary spacecraft could shrink to the size of a laptop computer on that desk. Molecular manufacturing is similar in many respects to molecular biology. In cells, molecular machines make biological components. Systems to guide molecular level assembly and the precise control of chemical reactions can help minimize waste and defects, producing systems of uniquely high quality. This means aerospace structure with over 70 times the strength-to-weight ratio of aluminum. In can mean being able to place the computing power of a billion modern workstations in a desktop package--while producing less waste heat than a light bulb.
"The beginning of the industrial revolution was characterized by massive, wasteful, inflexible machines. Old technology did not conserve resources, but consumed them, creating pollution along the way. Today, technologies are available which can create the things we need with dramatically fewer resources and waste. The next century could see the flowering of a new manufacturing revolution, symbolized by tiny, efficient, and intelligent machines traveling outward from the Earth to explore new worlds. Hopefully, with humanity close behind."
An online Nexis search for the term nanotechnology and common
variants has been done, covering a wide variety of popular print
media: magazines, journals, newspapers, wires, newsletters, and
Note the growth through 1991, a slowdown of the rate of growth in 1992-93, and a resumption of a higher rate in 1994. This is thought to reflect a natural process of waves of interest flowing through the media as they discover, lose interest in, and then rediscover nanotechnology concepts.
Alternatively, the 1992-93 period may have been a time of shakeout: U.S. researchers doing "top-down" research may have reduced their use of the terms as they became aware that it already has a more specific meaning in the minds of readers. If so, the resumption of a higher growth rate in 1994 reflects a greater acceptance of molecular ("bottom-up") nanotechnology as a goal. This last point is supported by increasing numbers of scientists and others making public statements advocating molecular nanotechnology and molecular manufacturing (see this issue and Update 20).
From Foresight Update 21, originally published 1 June 1995.