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Nano World: Nano patents in conflict

By CHARLES Q. CHOI   |   April 25, 2005 at 8:24 AM   |   Comments

NEW YORK, April 25 (UPI) -- Entrepreneurs are striving to claim patents over as many key nanotechnologies as possible. This gold-rush mentality could lead to a frenzy of lawsuits involving overlapping claims, but a new report reveals unexpected opportunities exist, too.

"The conventional wisdom, for instance, is that everything is patented when it comes to carbon nanotubes, and that's actually incorrect," Matthew Nordan, vice president of research for Lux Research in New York City, told UPI's Nano World.

The ideas behind nanotech inventions lie at the very heart of the field, and that intellectual property is most often defended with patents. As of late March 2005, a total of 3,818 U.S. patents had been issued in the field, beginning in 1985, with another 1,777 applications awaiting judgment.

To analyze this technology landscape, Lux Research and the law firm Foley & Lardner LLP reviewed 1,084 U.S. patents relating to five key nanomaterials: dendrimers, quantum dots, carbon nanotubes, fullerenes and nanowires.

"We wanted to address patents that were foundational to many other inventions," Nordan said.

Quantum dots are semiconductor nanocrystals under study for use in electronics and lasers. They also show potential as improvements over the current fluorescent labels used by pharmaceutical and biotech companies to track molecules and identify their interactions. Quantum Dot Corp. in Hayward, Calif., has been collaborating on the applications with pharma industry giants Genentech, Roche and GlaxoSmithKline.

Of the 319 quantum dot patents, "there are a lot that very clearly overlap," Nordan said. "If you want to look for a place where there will be an intellectual property battle, this is it."

No less than four groups have claimed to hold the majority of quantum dot patents -- Quantum Dot, Nanosys in Palo Alto, Calif., Evident Technologies in Troy, N.Y., and Ultratech in San Jose, Calif.

"Nanosys and Quantum Dot Corp. both say they have exclusive licenses to all key patents for quantum dots," Nordan said, "QDC for life sciences applications, and Nanosys for everything else. I've spoken with an executive from one of the two, who told me if anyone else scales up with quantum dots, they'll shut them down, but Evident and others will tell you they think they have a way around them. One of those two standpoints is wrong."

Part of the reason behind this confusion is nanotech patents often use different language to describe quantum dots.

"Some call them quantum dots, some call them semiconductor nanocrystals or silicon or germanium nanoparticles. There's no standardized terminology for a lot of this stuff in the research community," said John Miller, a managing editor of the journal Nanotechnology Law & Business. "As the patent office becomes more experienced, we'll see some of this get resolved."

Dendrimers are made of molecules that branch, tree-like, from a central point. Scientists can precisely tailor what each branch tip holds, permitting a diversity of applications. Starpharma in Melbourne, Australia, is developing dendrimers as pharmaceuticals they can readily customize to treat specific diseases, tissues or organs.

Of the 229 total dendrimer patents, "Dow has all the foundational patents for dendrimer structure and synthesis," Nordan said. Dow has assigned its patents to startup Dendritic NanoTechnologies in Mount Pleasant, Mich., in exchange for a sub-fee when the company receives a licensing fee. Starpharma, meanwhile, has obtained exclusive rights to the patents Dendritic controls for specific healthcare applications.

Single-walled carbon nanotubes are 100 times stronger than steel at one-sixth the weight, making them highly valued for strengthening materials. They also can be tuned to be either very effective electrical conductors or semiconductors. As a result, Samsung, Dupont and NEC are studying carbon nanotubes as alternatives to cathode ray tubes for advanced flat panel displays.

U.S. nanotube producers include Bucky USA, Carbolex and Carbon Nanotechnologies, while Belgium has Nanocyl, China has Shenzhen Nanotech and Guangzhou Yorkpoint, Russia has Nanocarblab, and Japan has Mitsui and Showa Denko.

When it came to the 293 carbon-nanotube patents, researchers found the common assumption -- that carbon nanotube patents are both numerous and overlapping across all important application categories -- is wrong. The area of electronics patents for carbon nanotubes does look fairly crowded, but energy, healthcare and cosmetics look far more open.

"For instance, with energy, you can think about long-distance distribution mechanisms for electricity," Nordan said.

Fullerenes are spherical carbon molecules that offer attractive electrical properties and can withstand pressures more than 3,000 times as high as the atmosphere at sea level without deformation. The chemical reactivity of fullerenes could make them very useful to medicine. Fullerene company C Sixty in Houston signed a research license with Merck in 2003 to develop anti-oxidant buckyball drugs for cardiovascular disease treatment.

Of the 215 fullerene patents studied, a third lie abandoned by inventors who failed to pay patent maintenance fees.

"There was a great land grab for fullerene patents as a wonder material, but when the costs remained high, it's not surprising no one pursued them," Nordan said. This means corporations and investors should be skeptical of any startup's claim of high commercial value for its fullerene intellectual property.

Moreover, Mitsubishi claims intellectual property rights to the basic structure of fullerenes, with patents issued in Japan, Korea, Australia and Europe. Its U.S. patent is still under examination. If Mitsubishi's claims hold, anyone using fullerenes could owe the company royalties, according to interviews conducted by Lux Research and summarized in the report.

Nanowires are made of metal, but with nanometer dimensions, although most patents are for wires using semiconducting materials. They offer the advantage of building microchips via self-assembly instead of having to etch tiny chip patterns from bulk silicon.

At 51 patents, "nanowires are by far the least-developed field," Nordan said.

Still, "it is showing rapid development, with a strong upward spike in the number of filings in that area," added Stephen Maebius, chair of the nanotech industry team at Foley & Lardner. "People are just now controlling and fine-tuning construction and manipulation of them, making new applications possible, and so patents are starting to fly."

Nanowires look like an underexploited platform for development. One company already has taken notice. Nanosys is attempting to control patents for all inorganic semiconductor nanostructures. The company already has sought to acquire licenses to all commercially important nanowire patents, Nordan noted.

"With the smallest number of patents, nanowires is the best place to try and execute that," he said.

Overlapping patents inevitably will lead to at least a few lawsuits, but "we are seeing more in patent licensing than litigation," Maebius told Nano World. "The stage is set for a wave of cross-licensing agreements by startups, and bundles of intellectual property for specific applications licensed by groups of large corporations."

--

Nano World is a weekly series examining the exploding field of nanotechnology, by Charles Choi, who covers research and technology for UPI Science News. E-mail: sciencemail@upi.com

Topics: John Miller
© 2005 United Press International, Inc. All Rights Reserved. Any reproduction, republication, redistribution and/or modification of any UPI content is expressly prohibited without UPI's prior written consent.
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