Nano startups consolidate IP positions

Feb. 17, 2005 — Lawyers have been saying for years that there’s going to be a big battle over nanotech intellectual property. In the past month at least two more opening salvos were fired.

Just yesterday, Carbon Nanotechnologies Inc. announced its patent portfolio now numbers 30 and declared it has broad patent protection. A few weeks earlier, Dendritic NanoTechnologies Inc. announced a deal with Dow Chemical Co. that consolidates the IP portfolio for dendrimer technology under Dendritic’s control.

Houston-based Carbon Nanotechnologies claims that its patent portfolio positions it as the dominant nanomaterial company for a specific kind of carbon nanotube. It held a conference yesterday to discuss its portfolio of more 30 issued or allowed patents covering ways to make nanotubes, or to make them useful.

“The number 30 doesn’t mean anything in itself,” said Bob Gower, chief executive of the Houston-based nanotube manufacturer. “You never get the 10 most important patents issued first. But with 30, there now are broad patent (protections) that give an extremely strong position.”

Founded in 2000, the Houston-based manufacturer of single-wall carbon nanotubes has filed and been issued two critical patents for producing nanotubes, according to Gower. It also has licensed or partnered with corporations that license two other manufacturing methods.

Small tech patenting activities – of which nanotechnology is a part – have skyrocketed in recent years, according to Thomson Derwent’s Web of Nanotechnology online patent database. Experts expect the pace to continue quickening.

CNI also has been granted patents on methods for doctoring tubes to make them compatible with other materials or suitable in systems. Nanotubes proposed for applications such as wires, electrodes or additives for lightweight but strong armor typically need to be treated to perform properly.

“IP protection is critical for everything we’ve done,” said Ray McLaughlin, CNI’s chief financial officer. “IP gives us the freedom to price appropriately, and keep others from nipping at the door.”

Or keep them knocking. CNI recognized in its infancy that its intellectual property could prove as hot a commodity as the nanotubes it hoped to make in quantities. “As we sell them (nanotubes) to people,” Gower said in an interview in 2001, “we will also have to provide them with other technology, in many cases other intellectual property and the rights to use that either as a part of the price we’re charging for nanotubes or separately as an ownership arrangement.”

Originally the company positioned itself as the leading supplier of single-wall carbon nanotubes. Nanotubes can be made as single tubes, a cluster of two or three tubes or a tangled mass of tubes. The properties, which range from thermal and electrical conductivity to tensile strength, vary depending on composition. This month CNI announced it began making double-wall nanotubes as well, and added “small diameter carbon nanotubes” to its lingo.

Dendritic Nanotechnologies had to consolidate the IP around dendrimer technology in order to execute the next phase of its business plan, according to Bob Berry, chief executive officer of the Mount Pleasant, Mich., firm.

The company had previously acquired research rights from Dow Chemical, where dendrimer technology was developed, but had to return to the company for additional rights in order to commercialize the material in new markets. Now that it has acquired the 196 patents covering dendrimer technology, says Berry, the company can move forward quickly without having to negotiate IP on a piecemeal basis.

Along with the intellectual property, Dendritic also inherits six existing licensing arrangements. An early backer, Starpharma Holdings Ltd. of Australia, holds rights to a particular type of pharmaceutical application.

Dendritic’s strategy going forward is to expand its list of licensees considerably, and Berry says the company is poised to enter new markets like photonics and electronics. Lowering cost will be a crucial component of that strategy, he said, so Dendritic is developing a dendrimer that would lower the price 10 to 40 times.

“If nanotechnology is going to fulfill its dreams it has to get to application,” Berry said. “This deal gets us much closer to that.”


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