Jan. 5, 2006 – NanoLogix Inc., a Sharon, Pa., nanobiotechnology company working to develop technologies for a variety of markets, announced that it has named David Rivers to its board.
Rivers was with Pfizer for 34 years and was vice president in charge of the research, development and engineering operations for the Schick & Wilkinson Sword Group since 1993, where he was responsible for new product and process activity.
Jan. 4, 2006 — New York Governor George Pataki announced on Tuesday additional details about the new Institute for Nanoelectronics Discovery and Exploration (INDEX) that will be located at the Center of Excellence in Nanoelectronics at the University at Albany.
As part of the effort, a new 250,000 square foot building will be constructed at the Albany Center of Excellence, according to an Albany Nanotech release. It will include a new 100,000 square foot clean-room wing. The center was announced in December by the Semiconductor Industry Association and the Semiconductor Research Corporation, along with a second center, the Western Institute of Nanoelectronics, in California.
The INDEX consortium is led by SUNY University at Albany College of Nanoscale Science and Engineering and includes Georgia Institute of Technology, Harvard University, Massachusetts Institute of Technology, Purdue University, Rensselaer Polytechnic Institute, and Yale University.
The institute will focus on nanotech research, including the development of nanomaterials, fabrication technologies, and new chip designs. It will partner with leading researchers from consortium members and with on-site corporate researchers from leading semiconductor companies such as Intel, Micron, AMD, IBM, Texas Instruments, and Freescale Semiconductor.
Total public and private funding for the project will reach $435 million, according to the release, with New York State committing $80 million in matching funds to help INDEX establish the scientific, technical and manufacturing infrastructure, as well as for workforce training. Funding is also to be provided by the federal government, semiconductor equipment manufacturers, and semiconductor material suppliers.
– David Forman
Jan. 3, 2006 — Ovonyx Inc. of Santa Clara, Calif., and Samsung Electronics Co Ltd. of Seoul, South Korea, announced that they have entered into a long-term license agreement regarding Ovonyx’s thin-film semiconductor memory technology known as Ovonic Universal Memory.
Ovonyx memory technology uses a reversible phase-change memory process that has been previously commercialized in rewritable CD and DVD optical memory disks. The technology could be used in applications such as Flash and DRAM memory replacements, as well as in embedded applications in product areas like microcontrollers and reconfigurable MOS logic.
Byung-Il Ryu, executive vice president of Samsung Electronics’ semiconductor R&D center, said in a prepared statement that the agreement would open doors to further development and research on phase-change technology as a solution for next generation memory designs and applications.
Acacia Research Corp., a Newport Beach, Calif., holding company whose CombiMatrix division makes microfluidic products, announced that Jonathan Said joined CombiMatrix’s wholly owned subsidiary, CombiMatrix Molecular Diagnostics, as a member of its scientific advisory board. Said is chief of the division of anatomic pathology at UCLA Medical Center for the Health Sciences.
Advance Nanotech Inc., a New York-based provider of financing and support services for nanotechnology companies, announced the appointment of Thomas Finn as chief financial officer. Finn was formerly financial controller. As CFO, he will be responsible for designing and implementing financial reporting infrastructure, policies and procedures. Advance Nanotech also appointed Tony Goncalves to its board of directors. Goncalves is associate director at Purdue Pharma L.P.
Arrowhead Research Corp., a Pasadena, Calif.-based funder and developer of nanotechnology research and companies, announced the appointment of Leon Ekchian as president. Ekchian’s responsibilities will include overseeing the day-to-day operations of Arrowhead’s subsidiaries and developing its long-term strategic plan. Ekchian was president and chief executive officer of Litex Inc., a Lockheed Martin spinoff focused on the commercialization of advanced electronic automotive technologies.
 Ken Thouvenot |
FKI Logistex, a St. Louis maker of integrated material handling solutions, named Ken Thouvenot as vice president of project management and engineering in the company’s North American manufacturing systems unit. Thouvenot was most recently vice president of project management and marketing. The company also named Matt Wicks as director of systems engineering and Brett Felton as international sales manager.
iCurie Inc., a Miami maker of thermal management products for computers and consumer electronics, named George Meyer vice president of sales and marketing and general manager for the Americas and Europe. Meyer will be responsible for developing key customer relationships, managing the company’s product portfolio and growing sales throughout the industry. Meyer was an executive at Thermacore International, a subsidiary of Modine Manufacturing, from 1977 to 2004.
MFIC Corp., a Newton, Mass., manufacturer of industrial submicron processing equipment, announced that Eric Walters and George Uveges have been appointed to its board of directors. Walters will serve as chairman of the audit committee, while Uveges also joins that committee. Walters is vice president and chief financial officer of CardioTech International Inc. Uveges is a founder and principal in the Tallwood Group.
Microchip Biotechnologies Inc., a Dublin, Calif., company that is developing nanofluidic sample preparation and analytical instrumentation for the genomics and biodefense markets, named Barney Saunders as chief operating officer. Saunders was with Agilent Technologies, where he held the positions of general manager and vice president for bio research solutions and senior director of science and technology.
Nanomix Inc., an Emeryville, Calif.-based developer of sensors using carbon nanotubes, named Gregory Schiffman to its board of directors and appointed him chairman of its audit committee. Schiffman is executive vice president and CFO of Affymetrix.
 Steve Leach |
Nanotechnologies Inc., an Austin, Texas, nanoparticle synthesis and applications company, named Steve Leach chief executive officer. Leach is responsible for the company’s overall strategic direction, with emphasis on developing its product and application roadmap and accelerating commercial programs. Leach was with Dell Corp. in a variety of roles in product development and corporate venture capital.
Qcept Technologies Inc., an Atlanta maker of chemical metrology tools, named Erik Smith as president and COO. Smith will be responsible for product development, applications, sales and marketing, and day-to-day operations at Qcept. Smith was with Ultratech Inc. as senior vice president of worldwide sales and marketing.
 Cliff Chen |
Rohm and Haas Electronic Materials’ CMP Technologies group, a Phoenix developer of chemical mechanical planarization technology, named Cliff Chen plant manager at its Asia Pacific Manufacturing and Technical Center in the Hsinchu Science Park in Taiwan. Chen will be responsible for the construction and execution of the pad manufacturing operations at the facility. Prior to joining CMP Technologies, Chen supervised the manufacturing department at CMC Electrical Ltd.
Veeco Instruments Inc., a Woodbury, N.Y., maker of metrology tools and process equipment, named Jeannine Sargent as executive vice president of metrology and instrumentation. Sargent was formerly executive vice president and general manager of the research atomic force microscope and nanobio business unit. The company also named Robert Oates as senior vice president of data storage. He was formerly senior vice president of ion beam operations.
It only takes the first three pages of “The Eye for Innovation” to understand the reasons for the successes behind Control Data and Robert Price, its former chairman, president and chief executive officer. Technology, Price writes, equals know-how. Innovation stands for problem solving.
So much for gizmos, gadgets and the fuzzy, long-winded descriptions that litter corporate board rooms and business school classrooms. Price distills business concepts to their essence in a fascinating analysis of a company that was founded nearly 50 years ago to provide high-end data processing and equipment primarily for scientific and defense users. It metamorphosed from computers to peripherals and finally services. It now exists as Ceridian Corp.
While Control Data may no longer be a well-known name in the world of high tech, one of its founders remains an icon. Seymour Cray, architect of supercomputers and the engineering genius behind several of Control Data’s early blockbuster systems, was among the dozen pioneers who helped grow the Minnesota startup. Within 12 years, the company went from having no products and only $600,000 into a corporation with a global presence and revenues in excess of $1 billion.
 “The Eye for Innovation” By Robert M. Price (nonfiction, 329 pages, published in 2005 by Yale University Press, $30 in hardback) |
Price, who rose up the executive ranks from general manager in the 1960s to president by 1981, credits a company culture that encouraged staff to use their know-how and problem-solving skills to beat competitors like IBM. Know-how led to a diverse set of products, from Cray’s powerful supercomputers to educational software and shareware. Problem-solving abilities helped managers recognize and create business opportunities.
Control Data added peripherals to its portfolio to provide a low-cost solution to support its computer business. Services took center stage when it became clear that clients needed more than hardware and software. Price takes some pleasure in noting that IBM, Control Data’s nemesis for most of its existence, has shifted its focus to services.
In many ways, “The Eye for Innovation” resembles the standard how-to books found in the business section of a bookstore. Price uses Control Data’s decades-long history to illustrate industrial, academic and governmental partnerships, employee relations and even civic responsibilities. He weaves stories of Control Data’s novel products, services and workplace concepts to guide managers.
If you want innovation, for instance, accept failure. Cray continued to head up a laboratory in Wisconsin despite some expensive design duds. That sent a strong signal to innovators that Control Data was sincere in its mission. But by 1985, Control Data’s enthusiasm for all good ideas created an unfocused and unprofitable business.
“There was too much attention to what might be the next opportunity and too little to the problems of the opportunities already in hand,” he writes. “… Every new services opportunity was exciting – it clearly had potential, even if poorly defined, and it was a great challenge to our capacity for innovation. What could be more enticing? And now the price had to be paid, and it was: in 1986, thirteen business units were sold or shut down.”
The cautionary tale reminds me of companies involved in emerging and platform technologies such as microsystems and nanotechnology. Innovation can become a siren song if it is isolated from customers’ needs, Price argues. Control Data survived its crisis, but not without scars.
I often wondered as I read the book which of today’s micro and nanotech companies will prove to be their generation’s Control Data. Are nanomaterials specialists such as Oxonica, Carbon Nanotechnologies Inc. or Nanophase Technologies poised to become leaders, like Control Data circa 1960? Are mature companies such as BASF, 3M, GE – and of course, IBM – breeding innovations, as Price claims Control Data did for its first three decades, that are based on micro and nanotechnology? The Control Data saga offers a compass for them all.
Steven Jefferts knows better than to make lofty predictions about F2. After all, it took his colleagues and him almost a decade of tweaking to get F1 into the position as the world’s best timekeeper.
F1 is nothing like a traditional clock, though. It’s a laser-cooled cesium fountain, a device that determines the passing of a second by measuring the oscillations of cesium atoms. “Nine billion and change” oscillations add up to a second, said Jefferts, a physicist at the National Institute of Standards and Technology in Boulder, Colo., and designer of F1. F1 can so accurately track the oscillations that it is projected to neither gain nor lose a second in 60 million years. Jefferts and his team published their record results in the journal Metrologia last fall.
Since 1999, F1 has set the standard in the United States and is a contributor to the International Atomic Clock. The data is used to synchronize Global Positioning Systems, for instance, and for defense applications ranging from navigation to code breaking.
“Time applications are not the place where huge accuracy is needed,” Jefferts said. “It’s when you’re trying to synchronize at high speeds. With GPS, if you just let the clock wander off on its own, eventually it will tell you a wrong time and give a positioning error.”
 From left, physicists Steven Jefferts, Elizabeth Donley and Tom Heavner are mastering the art of accuracy by improving NIST’s atomic clock. Photo courtesy of NIST. |
Jefferts and co-workers Elizabeth Donley and Tom Heavner think in terms of reducing uncertainties rather than increasing accuracy. “There’s a laundry list of things that can mess up the clock,” Jefferts said. “They add up to the uncertainties.”
The NIST group earned their title as having the most accurate of the clocks through incremental changes that improved reliability: Swapping Jefferts’ homemade laser apparatus for a commercial product and better monitoring of subsystems allowed them to conduct uninterrupted run times. They even found ways to overcome the shortcomings of their lab space, an add-on to the NIST facility.
“We’re the poster child for how bad an environment can be,” Jefferts joked.
That will change this year. Jefferts and his crew in the Time and Frequency Division are moving to better digs within NIST’s building. The new space will hold F2, a second-generation fountain that may be in place by the summer. F2 is expected to have capabilities that will whittle away some remaining uncertainties. But based on his experience, Jefferts cautions, it will take some time before F2 has a hope of besting its predecessor.
– Candace Stuart
We may have come a long way from the graffiti-covered city subways of decades past, but illicit art is still an expensive problem for municipalities, corporations, universities and even homeowners. Now a Las Vegas company is betting it can make a difference with a nanoparticulate-enhanced sealant: Graffiti Armor.
The $200 per gallon, water-based sealant can be applied to almost any surface, according to Harry Azevedo, president of SealGuard USA, including porous surfaces that need to breathe, like concrete and masonry. Workers apply the sealant with a hand sprayer, roller or paintbrush, Azevedo said. Afterwards, they can remove graffiti with warm soapy water. An extra-powerful version, Bullet Proof Graffiti Armor, sells for $396 per gallon.
 SealGuard USA’s Graffiti Armor makes sure paint won’t stick to walls, buildings, trucks and more. |
The company began using nanoparticulates in order to maintain the sealant’s consistency. “When you mix a number of chemicals together they tend to separate,” Azevedo said. “You want to keep them in suspension so that your first squirt is as powerful as your last squirt.”
Graffiti Armor is sold online and through a network of independent applicators and distributors. Azevedo said the company is currently selling mostly to municipalities and government agencies but that it is now seeing an uptick in interest from universities. “Whenever they have a home game, the opposing team tries to paint their mascot.”
If SealGuard can solve that problem, it is poised to really, well, make its mark.
– David Forman
Here’s some advice for 2006: Always try to anticipate who is gunning for your tailpipe.
Rick Snyder, co-founder and chief executive of the venture capital firm Ardesta, offered that pointer during a presentation at the NanoCommerce conference that Small Times and partners held in Chicago last November. Snyder has helped launch many micro and nanotech-related companies, including Small Times. As the former president and now chairman of Gateway Inc., he knows what it’s like to spot an object looming ever closer in the rearview mirror.
Later that day, Kurt Petersen told attendees what it feels like to watch a competitor zoom by you. The winner of Small Times’ 2005 Lifetime Achievement award was listing some of the microsystem community’s successful commercialization efforts during his acceptance speech at a luncheon ceremony. Petersen’s own contributions, developed through two of the startups he created, included blood pressure monitors that use MEMS sensors and portable pathogen detectors.
But there were failures as well, he cautioned. Take his experience as the architect of MEMS sensors targeted for the automotive industry. He described one day at the office when he received a fax describing a MEMS accelerometer from the semiconductor company, Analog Devices Inc. He rushed the paper over to his boss. “What do they know about MEMS?” was the dismissive response.
ADI knew enough to capture the airbag market in the 1990s. Last year, ADI announced that it had shipped its 200 millionth inertial sensor. In the meantime, Petersen’s company had faded into obscurity.
In this issue, we’ve focused on here-and-now nanotechnology products. We’ve highlighted key consumer markets where nanotech has made inroads: cosmetics, textiles, construction materials, sporting goods and electronics. How many companies in those markets have glanced over their shoulders to find a nanotech startup at their bumpers? How many have overlooked the threat?
Suppliers of titanium dioxide, zinc oxide and other materials may have noticed that Oxonica, Nanophase Technologies and other nanomaterials specialists are leaving them in the dust in the cosmetics markets. Oxonica and Nanophase provide nanoscale additives to products such as sunscreens that allow lotions to appear transparent but still block out damaging ultraviolet light rays.
The golf ball industry may see a change in its leader board as well. NanoDynamics has devised a golf ball whose hollow metal core reduces hooks and slices. The balls meet the industry’s standard for size and weight. NanoDynamics began selling the balls late last year, which could be the beginning of the end for traditional golf ball makers. Are they looking?
But as Donn Tice exemplifies, it takes more than technology to get and hold a lead. Tice heads up Nano-Tex, whose nano-based fabric additives have helped rejuvenate the textile industry. Clothing manufacturers use Nano-Tex’s products to give their brands pizzazz, whether it’s slacks that don’t stain or shirts that don’t wrinkle. The company now works with dozens of mills and its name is paired with retailers like Eddie Bauer and Lands’ End.
Nowadays Tice hears the roar of other nanotech companies that have a bead on Nano-Tex’s tailpipe. And he has a strategy for widening his lead: His sales team is targeting the big boxes, convincing retailers like Target and Bed Bath and Beyond that they need to stock Nano-Tex-enhanced clothing, napkins, pillows and other home furnishings. Create demand among the decision-making buyers, he argues.
Anticipation, it turns out, is only the first step. Next you need to outmaneuver them on the track.
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Candace Stuart is editor-in-chief at Small Times. You can reach her at [email protected].
Not long ago, it was a rarity for a university to include a program dedicated to nanotechnology on its roster. But in recent years, graduate-level and even undergraduate-level classes and degrees have cropped up in institutions across the globe. Nanotechnology’s rising profile has created opportunities – and challenges – for universities, as directors of three programs explain in an exchange with Small Times’ Candace Stuart.
 Wade Adams Director, Center for Nanoscale Science and Technology, Rice University |
ADAMS: Yes. It is not really recent; it is as longstanding as nano is – say 15 years. There has always been competition, and the intensity ebbs and flows with factors like the economy of the U.S., immigration and visa laws, etc.
The rapid growth of nanotech has fueled the competition. Rice was the first nanotech center, and now there are more than 130 in the U.S. in academia alone. Everyone wants to hire faculty and find students, and the flow of foreign students has been (hopefully temporarily) slowed, so there are fewer total students available.
KALOYEROS: The global competition for faculty and students has intensified due to: (1) the lack of an adequate pool of faculty and professionals with training in nanoscience and nanoengineering; (2) the push by states, countries and regions to build research university-based high tech economies; and (3) the increasingly higher value placed on human intellectual capital as a primary innovation driver. However, the UAlbany College of Nanoscale Science and Engineering (CNSE) has focused on collaboration instead of competition by building cross-border and cross-continent partnerships that leverage combined resources and maximize return on investment.
SIVOTHTHAMAN: Suitable students are out there. I think it is rather a question of being an institution with high reputation. As far as faculty hiring is concerned, yes, there is some competition. In new initiatives involving research-intensive and emerging areas, you want to attract, hire, and retain top-notch researchers.
 Alain Kaloyeros President, Albany NanoTech; VP, College of Nanoscale Science and Engineering, University at Albany-SUNY |
ADAMS: Via individual faculty members in their departments. CNST (Center for Nanoscale Science and Technology) doesn’t have a recruiting program, per se, but we send prospective students to the appropriate department. We are also starting some specific international collaborative programs.
Nothing beats direct personal knowledge and word-of-mouth recommendations for finding and attracting great students. Also, good research and publications lead to good student and faculty interest.
KALOYEROS: The UAlbany CNSE has developed a proactive recruitment strategy for faculty and students. We found that targeted and personalized attraction efforts that are customized to the interests and needs of specific candidates are extremely effective. In contrast, generic “one-size-fits-all” recruitment methods have been largely a failure.
SIVOTHTHAMAN: Our undergraduate program in nanotechnology engineering is unique and new; the first batch of our nanotech undergraduate students joined the university last fall (2005). We did present the program initiative in high schools and university fairs. We received a huge number of applications, and we now have the top students in our program. For recruiting faculty, we reach out through highly reputed journals and the Web.
Q: Which ranks as your top priority and why: advancing basic knowledge in nanoscience and technology; advancing technical knowledge; developing technologies for commercialization; or developing a trained workforce?
 Siva Sivoththaman Director of nanotechnology engineering, University of Waterloo |
ADAMS: In a big institute such as CNST (110 faculty), all are important. Some faculty are better known for basic science and engineering, while others are noted entrepreneurs. All are interested in producing trained and educated nanotech graduates (without a nanotech degree, however.) And we publish a lot and obtain patents, too.
KALOYEROS: There is no question in that advancing basic knowledge is the essential enabling ingredient and, as such, ranks as our top priority. Advancement of basic knowledge ensures exploration and discovery of the critical innovations needed to develop a sound technical knowledge and execute viable commercialization paths. Also, it provides an optimized pathway for educating and training the skilled nanotechnology savvy workforce. But all four outcomes are important.
SIVOTHTHAMAN: Very tempting to say “all!” Nanotech at Waterloo is multifaceted. We have an undergraduate program initiative and a strong research initiative. We are looking at an area that is highly interdisciplinary, already into several industry sectors, and yet, still emerging and expanding. Therefore, each of those four outcomes is important. If I am to pick one I would pick advancing basic knowledge in nanoscience and technology.
ADAMS: We haven’t studied this numerically, but we don’t offer a B.S. or Ph.D. in nano, only a master’s degree in nanoscale physics that is part business. Those grads have mostly stayed in the area and are in companies. Our Ph.D.s are split among business (maybe 50 percent stay local) and academia (postdocs, mostly go), with a few to national labs.
KALOYEROS: The career path followed by our students has run the geographical and professional gamut of employment opportunities in the high tech industry. The lion’s share of our students has been heavily recruited by the major international nanoelectronics corporations across the U.S. and the world. However, a rapidly increasing percentage is choosing to remain in New York’s Hudson Valley.
SIVOTHTHAMAN: It’s mixed. The region itself is Canada’s Technology Triangle Area and a significant number stay. There is also an increasing interest in grad programs. One of the advantages of the co-op nature of Waterloo’s undergraduate education is that our students are exposed to opportunities at an early stage.
ADAMS: The interdisciplinarity of nano is the root of its greatest potential and its greatest challenges. Universities are almost all organized around departments of a single discipline. Education, and to some extent research, occurs within the framework of departments, even in the universities that are most successful at fostering interdisciplinary research. How to best support interdisciplinary initiatives, given that departments are almost certain to remain the fundamental organizing unit of most campuses, is one of the most significant challenges facing universities today.
KALOYEROS: This is a difficult question to answer, particularly as CNSE has only been in operation since April 2004. Probably the biggest challenge we faced is name recognition within the traditional academic community.
SIVOTHTHAMAN: By looking at the way we are expanding in strategic areas, I think we are on the right path.
ADAMS: State: no money, lots of enthusiasm. National: research funding steady but very much effort required to win grants. We receive some special appropriations for equipment support through a multi-university consortium that requires a lot of effort to sustain.
Our program was built a decade ago by (Nobel Laureate) Rick Smalley and supporters by raising a substantial fund of private money that built a new building, endowed new professorships, endowed a couple of postdoc positions, and provided a startup fund for equipment purchase. We haven’t had another campaign like that, but it may be time to do it again.
KALOYEROS: The leadership of the state of New York has been instrumental in the establishment within CNSE of the intellectual assets and state-of-the-art facilities necessary to successfully create and sustain a highly competitive program. The state of New York has invested more than $600 million [along with industry and federal funding] to create a $3 billion nanotechnology mega-complex.
SIVOTHTHAMAN: Both provincial and national governments have been strongly supporting our institution in accomplishing our goals. Industry participation is a must in almost all government support programs. This combination of government/industry support is key to building our competitive programs.
ADAMS: We have a number of industry-sponsored research programs that support faculty members by providing money for grad students or postdocs, and we are negotiating for more sponsorships. We are doing a short course for one company and have requests for two-to-three hour topical short courses, as well. We are also working with companies to help develop a community/technical college program for associate degrees in nanotechnology.
Our goals are to provide education and research in nanotechnology, and to transfer that to the world. Industry assists greatly in achieving those goals.
KALOYEROS: CNSE has already established successful research and education partnerships with more than 150 computer nanochip producers, equipment manufacturers, materials suppliers and OEMs. In addition, the CNSE complex houses major R&D operations with leading nanoelectronics concerns.
Our collaborations have ensured the establishment of the resources necessary for our faculty and students to conduct cutting-edge research and education activities.
SIVOTHTHAMAN: We have several industry-funded research projects, industrial research chairs and also partnership programs involving industry and government. Our recent multimillion dollar research infrastructures are partly supported by industry. Our education program also benefits from industry in terms of scholarships, assistantships, teaching labs, and of course co-op.
For embryonic technologies such as nanotechnology, intellectual property (IP) has become intricately complicated, like building at the nanoscale. Nanotechnology patent filings continue to proliferate and are extremely competitive, which adds to the complexity. These days, one business commentator will complain that patents have become too powerful. The next commentary will then express dismay that the system is too weak. We hear concern, if not angst, about nanotechnology patent thickets, although patent thickets have been around for a long time.
Despite all the rigmarole over patents, the patent system has become central to nanotechnology. This is particularly true for small, emerging companies for which IP assets are a large part of corporate value, particularly if they can establish IP dominance. U.S. leadership in nanotechnology is directly linked to its complex but effective Bayh-Dole system for technology transfer to the marketplace through patent licensing to small companies. In this complex environment, businesses need answers for patent, licensing and deal issues. To help, we provide some practical tips on patent strategy and execution, as well as some updates.
Patent strategy. At least two strategic themes emerge for any patent strategy. First, aggressively generate base corporate value by regular buildup of the nanotechnology portfolio, which will provide the company with assets valued by the market. Establish legally sound IP domination. Second, do not forget to add seasoning; generate additional value with targeted, strategic filings. For example, file patent applications before beginning work on a joint development agreement to protect the company as others gain access to the technology.
If your company is based on patent licensing under the Bayh-Dole system, become knowledgeable about Bayh-Dole. The system provides an IP base for companies to exploit, but companies must know the limits. For example, understand domestic manufacturing requirements, reporting compliance and government rights in the invention. Companies working with universities should assume control of the patent prosecution as early as possible.
Broad patent prioritization should be carried out. For example, patents should be crudely ranked for corporate value (like the latest top 20 sports poll). Do not blindly file and maintain patent applications, but proactively map applications against product development plans (and competitors’ products) on a country-by-country basis so that unnecessary filings can be pruned.
Avoid being blindsided by monitoring for competitive patents. For example, valuable technology insights can be gleaned from competitive patents. Licensing and joint development opportunities can be uncovered. Another compelling reason: Investors want it.
Execution. The best patent strategy may not mean much without practical execution. Managing a patent portfolio is not easy, as the task is filled with details and deadlines. Recognize that patenting is a highly specialized process and requires help from outside counsel.
Companies should file all patent applications, including provisional patent applications that are strong enough to contain the essence of the invention, using solid attorney input. Weak provisional filings represent lost opportunities to generate corporate value. They can damage later attempts to protect the technology, and can undermine the IP value. Also, companies should execute honestly with the U.S. Patent and Trademark Office (PTO) to avoid later charges of inequitable conduct.
Patent updates. The PTO continues to develop a more rigorous, quality-based examination system. This includes creation of a nanotechnology classification system, 977. The number of patents in 977 now stands at more than 2,600. The first PTO-classified nanotechnology patent to issue was filed in 1974 (No. 4,107,288). Looking to the future, the PTO granted Zyvex a 977 patent on self-replicating manufacturing stations (No. 6,510,359). IP figured prominently in recent transitions at NaturalNano and Quantum Dot.
Patenting requires hard work to reap the rewards of the investment. When Nobel Laureate Richard Feynman kicked off nanotechnology in 1959 with his “Room at the Bottom” speech, he certainly did not have in mind the work required by the modern U.S. patent system – he talked more about having fun. Feynman envisioned that scientists would compete to build nanostructures motivated by human qualities other than money. However, he also recognized the motivating role of money and established a financial award for building the first small-scale motor.
In the same way, patents provide an economic incentive to build at the nanoscale. Nanotechnology’s creative genius is a fountainhead of the U.S. economy. Through patents, companies should protect the genius behind these nanotechnology miracles.
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Stephen Maebius is a partner and Steven Rutt is an associate at Foley & Lardner LLP. They can be reached at [email protected] and at [email protected].