A publication of the Foresight Institute
Enayati, an attorney with Venture Law Group, answers Foresight
members questions on intellectual property issues in
This column will discuss the significant changes in U.S. intellectual property law in 1995 that potentially impact the molecular manufacturing industry.
The Legislature was busy this past year catching up on changes required by the implementation of GATT (the General Agreement on Tariffs and Trade). The impact of the change in patent laws resuslting from implementation of GATT has a disproportionate impact on leading technology, such as nanotechnology. (Those issues were discussed in detail in the previous "Law in Technology" column, Update 23.)
Relevant bills which were introduced in Congress over the past year included:
None of these bills passed by the end of 1995.
The judiciary were equally busy in 1995 deciding important cases impacting intellectual property rights. The Supreme Court held that color alone could properly be the subject of trademark protection. The impact of this decision is not direct for the nanotechnology industry, but it does indicate a more expansive interpretation of the trademark laws. As the law continues to expand it may provide protection for certain aspects of nanomachines and inventions arising out of nanotechnology and molecular manufacturing, including packaging, marketing, and even the use of trade dress protection (which provides legal protection for the nonfunctional shape of items, such as molecular machines).
Also in the courts this past year, two of Lemelson's patents were declared unenforceable because over the 13 years of prosecution for the patents, Lemelson failed to cite a material reference. As you may recall, the patent activities of Lemelson have been cited as a basis for much foreign pressure on the US to change its patent laws. Lemelson was dealt another blow later in the year by a magistrate who recommended to the District Court for the District of Nevada that eleven patents asserted against Mitsubishi Electric Corp., Motorola, and Ford, be held unenforceable for unreasonable and prejudicial delays during prosecution of the patents. Although both Mitsubishi and Motorola had settled the suit with Lemelson, Ford continued to defend against the assertion of infringement, and apparently convinced the magistrate that its defense was valid.
Early in 1995, a district court held that the menu hierarchy of the Lotus 1-2-3 spreadsheet program was an unprotectable "method of operation," in the case of Lotus v. Borland International. Lotus was granted Supreme Court review of the decision. Oral arguments at the Supreme Court were held on January 8, 1996, on the day of the big blizzard which shut down most of the east coast. One week after the oral arguments, the Supreme Court issued an order, without an accompanying written opinion, affirming the lower court's decision denying copyright protection for Lotus' spreadsheet. The Supreme Court was evenly divided, 4 to 4 (Justice Stevens abstained from the decision). Because of the nature of the case, the decision is only binding precedent upon the First Circuit. Nevertheless, copyright protection for GUIs, and some say for software in general, remains restricted. This is in contrast to increased recognition of copyright protection for software in Europe.
In a case worth noting, the Court of Appeals for the Ninth Circuit held that intermediate copying of software is infringing activity. That court held that infringement occurred when the defendant used the plaintiff's computers at a customer's site to service the customer's computers, which then caused the plaintiff's software to be copied to the customer's computer RAM. By contrast, in the northern district of Texas, a court held that intermediate copying of software is fair use, to the extent that it is a necessary step in disassembling the software to discover its unprotectable elements, and thus not copyright infringement. Both of these decisions are consistent with previous decisions on these points, and affirm that courts are becoming increasingly sophisticated about copyrights conveyed to software products.
In a final noteworthy case, the District Court for the Northern District of California decided, at the end of 1993, that an operator of a computer bulletin board service and an Internet access provider may be contributorily liable for copyright infringement. The court held that both such parties were liable for infringement if they knew or should have known that the infringing works were uploaded and refused to remove the works from the bulletin board.
The US Patent Office was not idle in 1995. In fact, it was quite busy with implementing and clarifying the changes in US patent law. The PTO held public hearings on the proposed 18 month publication of patent applications and on newly proposed software examination guidelines. To date, the PTO does not publish US patent applications, and has not officially implemented any guidelines for examining computer-related inventions.
In 1995 the PTO announced that it would consider software embodied in a tangible medium, such as a diskette, patentable subject matter. This opened up the type of patent protection available to software. Again, in a trend that is counter to the current trend in Europe, the US is strengthening the patent protection available for software products and weakening the scope of copyright protection available for software.
Perhaps in response to the diminishing copyright protection in software, and perhaps in response to the strengthening of copyright protection in other sectors, the Copyright Office created a Board of Appeals in June 1995 for applicants whose applications for copyright registration are refused. The Copyright Office has taken an increasingly proactive role in the examination of copyright registration applications.
All of these changes, and proposed changes, to the intellectual property laws will have an impact on the type of legal protection available for nanotechnology inventions. The leading-edge nature of the emerging nanotechnology is a disadvantage in the face of the changes made to US patent law under GATT. However, the courts and the PTO are taking increasingly expansive views of protection for software inventions, either under patent laws or copyright laws. To the extent that much of nanotechnology and molecular manufacturing currently reside in software, the increased protection clearly benefits the software developer. However, the terrain to effective protection became more complex last year. The requirement for careful maneuvering around various obstacles (such as the new patent term) is required.
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.
BBC Carries Major Program on Nanotechnology
BBC's Horizon program last November 13 carried a major program on nanotechnology that provides an excellent video introduction to the topic. Featuring interviews with Foresight Institute Chairman Eric Drexler, nanotechnologist Ralph Merkle at Xerox, computer scientist Carl Feynman, and others, the program "Nanotopia" provides an excellent layman's introduction to the technical aspects of nanotechnology (showing, for example, how a scanning tunneling microscope can precisely move individual atoms) and a thoughtful discussion of the potential real-world outcomes when nanotechnology is realized.
Economic considerations may repeal - at least temporarily -
Moore's Law, describing the exponential density increase of
semiconductor chips. Gordon Moore, an Intel founder, observed
that since the early 1970s chip density has doubled every 18
months. Forbes Magazine (March 25 issue) reports on
the newly formulated Moore's Second Law, the exponential growth
in the cost of building a new chip fabricating plant. In coming
years, Forbes says, technology will continue to expand the
number of transistors per chip, but companies won't be able to
afford plants to take advantage of the new technology. "The
price per transistor will bottom out between 2003 and 2005,"
Forbes says. "From that point on there will be no
economic point to making transistors smaller. So Moore's Law ends
in seven years."
Comment: probably true, but only as an extension of existing lithographic technology. That's why many firms in the semiconductor industry are watching bottom-up nanotechnology technology very closely.
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Prague-born chemist Josef Michl, now on the faculty at the University of Colorado, is working to build a "molecular construction kit" using rods and connectors the size of molecules, reports the English publication New Scientist in its June 1995 issue.
Michl is working with simple molecular structures that form stiff, flexible rods. Michl has assembled rods from a mixture of carbon-hydrogen molecules and carbon-boron molecules, providing fine control over the total rod length. The rods are built up from such molecules as propellane, a "strained" form of C5H6, and cubane, a strained form of C8H8. "Strained" molecules are constructed with bonds that are forced out of their normal angles - 90° in cubane, for example, compared with carbon's normal orientation of 109.5°. So far, Michl has made rods whose lengths vary from 5 to 25 angstrom (10-10 meters), with precision within 1 angstrom.
Michl envisions that "his construction kit of such rod-like molecules could be used to make an inert scaffolding on which could be hung more reactive molecules with useful electronic or mechanical properties," New Scientist reported. While there are other ways of making rod-like molecules, Michl's are highly inert. They do not absorb visible or ultraviolet light, and they are stable at temperatures of at least 200° C and often much higher.
Related work is underway on connectors to join the rods together, the story reports. Metal atoms would be the simplest solution, offering the useful quality of strong joints that can be easily disassembled. Different metals give different binding geometries - square, octrahedral, and so on.
One application Michl proposes is a nano-scale "wind farm," with turbine propellors made from fused aromatic rings. It could also be run backwards, using microwaves to spin the rotors and propel helium atoms, creating nano-scale turbopumps.
Michl's real agenda, New Scientist reports, is "to get chemists thinking about the possibility of mechanically conceived molecular structures. When he presented simulations of his turbine concepts at a meeting in Paris in 1995, he encountered significant scepticism, the magazine reports. It quotes English chemist Fraser Stoddart, from the University of Birmingham, that, "'I don't think chemists' contributions will be to make mini-mini-mini computers or mini-mini-mini cars.'"
"But Michl holds to his belief in molecular machines-if not the turbines he is working on now, then perhaps molecular waterwheels or something completely different," New Scientist concludes. He says that many ingenious molecular devices, including a molecular shuttle devised by Stoddart himself, for instance, have been invented, but as yet they simply float freely in solution. "Michl's construction kit could be the 'bricks and mortar', coupling such devices together to make microscopic machines that are now just pipe dreams. And if he has set his sights high, he has an answer: 'I have always taught my children that a hiker who is lost in the woods and comes to a fork in the trail should always take the branch that goes more steeply uphill. I should live up to my own admonitions, right?'"
USC Professor Aristides
A.G. Requicha directs the Programmable Automation Laboratory,
part of the Institute for Robotics and Intelligent Systems at the
University of Southern California.
In his December 1995 newsletter he writes, "I gave an invited talk at the 4th Nanotechnology Conference in Palo Alto, which was probably the most interesting conference I have attended in the last few years. There is really a lot of excitement in the nanotech area! People at the conference reacted very positively to my talk, and thought that putting together robotics folks with chemists and materials scientists was 'obviously' a great idea. That means we had better hurry up, before others follow us into the area."
Those interested in nanotechnology-relevant work at USC can visit their Web site at http://www-pal.usc.edu.
Byte Magazine, one of the oldest and most respected publications in the computer world, devotes its April cover to the question, "When Silicon Hits its Limits, What's Next?" It answers with a look at three "new directions for the future of computing: Quantum computers, protein memory, and holographic storage." The story cites Moore's Law (see above), discusses the rapidly approaching limits of photolithography, and concludes that for computer memory storage, both holographic devices and protein molecules as bit storage devices offer hope. The latter approach is described by Robert R. Birge at the W.M. Keck Center for Molecular Electronics at Syracuse University, who has been working with bacteriohodopsin, a photosensitive protein obtained from nature. His work is also extensively discussed in the BBC television program "Nanotopia," discussed above.
Weird is the name of the Web site where
Foresight Director Chris Peterson has posted a breezy, but
informative, article for teenagers about nanotechnology. It's
located at http://www.spiv.com/nrrrd/weird,
a site to help enlist younger minds in the cause of science.
"Learn more about the technical side of things," Chris
writes. "The book Engines
of Creation-the first and still classic vision of a
world with nanotechnology-is going up on the Web, complete and
free for all, as you read this. Watch the Foresight page for the
publication announcement. Once you're up to speed, geek out on
sci.nanotech. To become a nano-whiz, try grinding through Nanosystems."
Club Wired hosted nanotechnologist Ralph Merkle late last year. The interactive online "chat" forum provided by Wired Magazine invited Ralph to discuss nanotechnology in the context of a Wired Magazine scenario, The Museum of Nanotechnology. This was part of Club Wired's Future of the Future series. He describes the experience as "like trying to carry on a dozen simultaneous conversations by typewriter."
Earthshaking news sometimes appears on the quake.unr.edu site, but that's where Stephen L. Gillett, Department of Geological Sciences, has placed the poster and manuscript of his talk at last November's Nanotechnology Conference. They're available by anonymous ftp in the directory /pub/gillett. Look for nearterm.wrd, the Microsoft Word file for his poster presentation "Near-term Nanotechnology: the molecular fabrication of nanostructured materials," and extract.wrd, his talk on "Nanotechnology, Resources, and Pollution Control." Both are in MS Word for Windows format and must be downloaded as binary files.
Do you know of an Internet site related to nanotechnology you'd like to bring to the attention of the Foresight community? Send the URL and a brief description to Foresight Update Editor Lew Phelps at Lew@PhelpsConsulting.com. Please do not duplicate site references already posted on Foresight and other key nanotechnology sites.
Foresight Institute is greatly expanding its presence on the
Web. Check out the ever-growing content on the site by pointing
your Web browser to http://www.foresight.org.
Among other things, the site now houses an expanded (and more timely) version of Foresight Update, the quarterly newsletter of Foresight Institute.
The site also has become a primary means of response by Foresight Institute to an extended, and highly inaccurate, story in Scientific American about nanotechnology. (See article above.)
Foresight has expanded its staff to further the growth of its Web site. "We view the Web as the single most valuable means of expanding awareness of nanotechnology developments and discussion of relevant issues," said Chris Peterson, Director of Foresight Institute.
The "webmaster" for the Foresight Web site is Robert Armas, who joins the staff part-time. He is a Senior Associate of Foresight Institute. He previously has served Foresight as a speaker, conference volunteer and active member since 1991. He recently left a nanotechnology information service to teach classes about Web Authoring and the Internet. As a freelance writer, Robert examines how future technologies may impact human cultures and the planet.
Our World Wide Web activity is ramping up, thanks to Robert Armas and Marcia Seidler, with major assistance from volunteers Russell Whitaker (internal webmaster at Silicon Graphics) and Jim Lewis. Jim did the work to get the 1981 PNAS paper up, and Russell is putting the entire Engines of Creation into Web format. Meanwhile, thanks to Ralph Merkle and Josh Hall for maintaining Foresight materials on their sites until we're fully up to speed.
Thanks also to Ralph Merkle for providing an excellent rebuttal to the Scientific American news story on nanotechnology (see elsewhere in this issue). Thanks also to Lew Phelps and Niehaus Ryan Group for timely media assistance on this. Additional thanks go to all of those who wrote letters to the editor of SciAm, especially Carl Feynman. Please keep these coming, and remember to cc Foresight.
Thanks go to Richard Terra for starting implementation of a major new Foresight project, the annual technical report.
For sending information, we thank John Burke, Jeff Cavener, Gino Coviello, Chuck Estes, Keith Farrar, Dave Forrest, Robert Freitas, Eric Geislinger, Frank Glover, Norm Hardy, Mark Haviland, Tad Hogg, Graham Houston, Marie-Louise Kagan, Rick Lewis, Joy Martin, Hugh McLarty, Anthony Napier, Chris Portman, Brian Reed, Mark Reiners, Tanya Sienko, Alvin Steinberg, John Walker, John Wynkoop.
Finally, ongoing thanks to Josh Hall of Rutgers, who moderates the sci.nanotech newsgroup, and our two hard-working staffers, Judy Hill and Elaine Tschorn. These three routinely do massive amounts of work benefiting Foresight and IMM.
With nanotechnology-relevant activity ramping up, it's getting harder to thank everyone who's helping. Your assistance, ideas, and contributions are greatly appreciated.
-Chris Peterson, Director
Structure Controlled Macromolecules of Nanoscopic
Dimensions, symposium within Materials Research Society
Meeting, April 8-12, 1996, San Francisco. Includes nanoscale
assemblies and nano-devices. Tel 412-367-3004, fax 412-367-4373,
email firstname.lastname@example.org, Web http://www.mrs.org
European Nanotechnology Initiative, April 9-11, Copenhagen Science Park. Contact BioSoft, tel 45-3917-9828, fax 45-3927-9011.
Minnesota Molecular Nanotechnology Study Group, regularly scheduled monthly meeting April 10 and second Wednesday of each following month, at Science Museum of Minnesota, 30 East 10th Street, St. Paul MN. Contact Steve Vetter, email email@example.com.
International Conference on Protein Folding and Design, April 23-26, NIH, Bethesda, MD. Contact Ms. Feldman, tel 301-496-2968, fax 301-496-8496.
De la microtechnique a la nanotechnologie: évolution ou révolution?, April 24, Centre d'Appui Scientifique et Technologique de L'Ecole Polytechnique Federale de Lausanne, Switzerland. Contact CAST, tel 41-21-6933575, fax 41-21-693-4747.
Proximal Probe Fabrication, Manipulation, and Measurement, June 23-28, Gordon Research Conference, tel 401-783-4011, fax 401-783-7644, email firstname.lastname@example.org.
Chemical and Biological Nanostructures, June 23-28, Gordon Research Conference, see above.
Protein Engineering, June 30-July 5, Gordon Research Conference, see above.
Workshop on Computational Nanotechnology, July 11-13, Colorado Springs Marriott. Contact Dr. Sally Meyer, tel 719-389-6437, email email@example.com.
Fullerenes (C60 and related), July 21-26, Gordon Research Conference, see above.
4th International Conference on Nanometer-Scale Science and Technology, Sept. 8-12, Beijing. Includes supramolecules, molecular recognition, SPM fabrication of devices, self-assembly, self-assembled molecular nanostructures. Contact Prof. Shijin Pang, fax 86-10-255-6598, email Pang@image.blem.ac.cn
Micro- and Nano- Engineering 96, Sept. 23-25, Glasgow, Scotland. Contact Dr. Carol Clugston, fax 0141-330-4907, email firstname.lastname@example.org
German Conference on Bioinformatics, Sept. 30-Oct. 2, University of Leipzig. Includes molecular modeling, molecular recognition, self-organization, DNA computing. Contact GCB '96, tel 49-341-9716100, fax 49-341-9716109, email GCB96@imise.unileipzig.de
Nanometer-Scale Science and Technology Division meeting, American Vacuum Society, Oct. 14-18, Philadelphia. Includes session NS7 on "Nanofabrication: Manipulation of Atoms and Molecules." Contact AVS, tel 212-248-0200, fax 212-248-0245, email email@example.com, Web http://www.vacuum.org
Senior Associate Gathering, Oct. 18-20, 1996, Palo Alto. Foresight and IMM Senior Associates meeting covering technical, entrepreneurial, applications, social topics related to nanotechnology. Contact Foresight, tel 415-917-1122, fax 415-917-1123, email firstname.lastname@example.org
Fifth Foresight Conference on Molecular Nanotechnology, Nov. 5-9, 1997, Palo Alto, CA. Enabling science and technology, computational models. Contact Foresight, tel 415-917-1122, fax 415-917-1123, email email@example.com, Web http://foresight.org/Conferences/MNT05/Nano5.html
From Foresight Update 24, originally published 15 April 1996.