Nanotechnology industry’s next feature: Invasion of the lawyers

Nov. 7, 2002 — This summer, several law firms joined a small but growing group that sees opportunities — and challenges — in nanotechnology.

Texas-based Winstead Sechrest & Minick P.C. and Minneapolis-based Oppenheimer Wolff & Donnelly LLP opened their nanotech practices within a week of one another.

“We’re really dealing with the hard sciences,” said Kelly Kordzik, chair of Winstead’s nanotech practice. “All our clients have Ph.D.s. ¿ They don’t have the experience of starting a business, running it, stock options. They don’t want to mess with that. They want to create.”

Some, like Winstead and its competitor Bracewell & Patterson, primarily offer services statewide with the goal of broadening their client base in time. Others, like Oppenheimer and Chicago-based Foley & Lardner, assembled groups from staff based around the world, but headquartered their practice in strategically relevant regions such as Silicon Valley and Washington, D.C.

Each practice offers something unusual — a team of lawyers with higher-level degrees in engineering or science, or experience nurturing life science-based or high-tech startups, or an insider’s understanding of the United States’ patent office.

The firms argue that having lawyers who understand the complexities of nanotechnology will help clients build sound businesses, strong patent portfolios, attract investors and produce marketable commodities. That in turn will help the industry grow. On the legal front, it already has. A 2002 study found nanotechnology patents filed in the European Patent Office grew at a rate of 7 percent annually through the 1990s.

Kordzik and his colleagues in Winstead’s offices in Austin, Houston and Dallas first became associated with nanotechnology through Rice University in Houston, a leader in nanoscale science and innovation, and Applied Nanotech Inc. (ANI), a subsidiary of SI Diamond Technology in Austin. Rice requested assistance protecting intellectual property for its work on carbon nanotubes and other nanostructures. ANI was developing applications for materials like nanotubes in displays. Winstead deepened the relationship by joining a biweekly nanotechnology colloquium and the Texas Nanotechnology Initiative.

“I thought we could take that experience and market it to clients,” Kordzik said. “We’re a leader in this area already. Let’s make sure we remain a leader.”

The firm unveiled its 21-member practice Aug. 30. Team members include a Ph.D. chemist who specializes in carbon nanotubes, a plasma physicist and a smattering of engineers.

Two years ago, Oppenheimer attorney Kitu Bindra noted that nanotechnology was building momentum in California’s San Francisco Bay region, particularly after the fall of dot-coms and the telecommunication industry. As the former general counsel for the incubator Enterprise Networks, he had associations with the NASA spinout Integrated Nanosystems and the nonprofit advocacy group NanoSIG. Oppenheimer, on the other hand, offered expertise in biotech and medical sciences that could serve as a model for working with nanotech startups.

Bindra joined the Silicon Valley office, and on Sept. 3 Oppenheimer named Bindra and his colleague Tom Thomas co-chairs of its 30-member nanotechnology group. The Silicon Valley and Los Angeles offices already represent a dozen nanotech startups, labs and consultants such as Integrated Nanosystems, Atomic-Scale Design and Quantum Insight, Bindra said. The firm offers a suite of services, from employment issues to IP and patenting and draws on the expertise of its veteran medical technology team.

To a degree, nanotechnology parallels the development of the biotechnology and life sciences industries, Thomas said. For instance, many nanotech startups are exploring partnerships with corporations, licensing agreements and other opportunities that mimic what early stage biotech companies faced. “These will be an important element of how nanotechnology develops,” Thomas said.

At the same time, the Oppenheimer and Winstead lawyers emphasized, nanotechnology is different because it is so broadly applicable. Quantum dots or nanotubes could find commercial applications in medical, optical, electronic or sensor devices, for instance. Adequately protecting an inventor’s IP may necessitate a multidisciplinary team of lawyers.

Chicago-based Foley & Lardner and Texas’ Bracewell & Patterson stitched together nanotechnology practice groups about a year ago but never formally announced them. Bracewell & Patterson’s decision was based in part on existing relationships with nanotech pioneers like Nanotechnologies Inc. of Austin and the acquisition of the tech-savvy law firm Felsman & Bradley, said group member David Jones.

“We wanted to be involved at the beginning,” Jones said. The group includes 30 lawyers. “It was the right people, the right place and the right time. But it’s not Bracewell & Patterson’s main focus. We’re excited about it for the long term.”

Stephen Maebius, a member of the NanoBusiness Alliance and a partner at Foley & Lardner’s Washington, D.C., office, said his firm, like Oppenheimer, recognized its expertise in life sciences could apply to nanotechnology. Foley & Lardner represents NanoInk Inc. in Chicago, Small Times’ parent company Ardesta LLC in Ann Arbor, Mich., as well as Northwestern and Cornell universities, the University of Chicago and Rensselaer Polytechnic Institute. Half of his group specializes in IP issues, and Maebius brings the added bonus of being a former patent examiner with the U.S. Patent and Trademark Office.

“The amount of legal work pales in comparison to what’s generated by the life sciences,” Maebius said. “But we believe it is critical to be there at the early stages, especially in IP. If there is not solid IP, they won’t get funding.”

The success of the practices hinges on the success of their clients, Oppenheimer’s Thomas said. “At the end of the day, money drives everything. If their funding improves, you’ll see our practice with a number of companies with money and developed technologies.”


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