Nanotech May Face Patent Problems
Nanotechnology and the Law
February / March 2007
Volume 5 Number 1
Carbon nanotubes are tubular structures made of "rolled-up" layers of interconnected carbon atoms. Due to their extraordinary electrical, mechanical, chemical, optical and thermal properties, nanotubes could be used in a wide range of products across several industries. Their commercial promise has resulted in a frenzy to establish broad patent protection on nanotube inventions.
Firms seeking to manufacture nanotube-based products now face a dense thicket of patents and patent applications held by different universities, government labs and companies. When products incorporating nanotubes begin to come to market in the near future, complicated and untested patent issues will confront lawyers and executives. Despite the importance of intellectual property in Commercializing nanotube-based products, little meaningful scholarship has been devoted to exploring carbon nanotube patents in detail.
Typically, nanotubes are classified as either "multi-walled" (with multiple hollow cylinders of carbon atoms nested inside one another) or "single-walled" (a single layer of carbon atoms and a hollow core). Both types of nanotubes are narrow and long and exhibit unique electrical, mechanical, thermal and optical properties.
For example, nanotubes can be lighter than aluminum and stronger than steel. Nanotubes have different electrical properties ranging from semiconducting to metallic depending on the "chiral" twist of the nanotube. Nanotubes have a current carrying capacity of one billion amps per square centimeter, while copper wires burn out at one million amps per square centimeter. It is estimated that nanotubes can transmit nearly twice as much heat as pure diamond, and are likely to remain stable in higher temperatures than metal wires.
The vast commercial potential for nanotube-based products explains the race by companies and institutions to establish broad patent protection. Patent claims, which are comprised of elements, determine the scope of a patent. There are three primary types of claims in carbon nanotube patents: (1) "composition of matter" claims; (2) "product, device, apparatus, or system" claims; and (3) "method" claims. A product or process infringes a patent claim when every element of the claim, or an equivalent of the claim, is found in the product or process.
We use the term "building block" patents to generally describe fundamental patents claiming nanotubes, nanotube-based products, and methods of making nanotubes and nanotube-based products. Building block patents are distinguished from incremental improvement patents, which have a much narrower claim scope.
Basic building block patents are likely to be infringed across a variety of different industries.
We use the term "applied building block" patents to describe patents claiming specific products based on carbon nanotubes and specific methods for manufacturing those products. Examples include apparatus and method claims directed to nanotube transistors, nanotube-based sensors and nanotubes embedded in polymer resins.
There are a large number of building block patents held by several different entities. Since the discovery of nanotubes in the early 1990s, substantial research dollars have poured into nanotube research at academic institutions, government labs, corporate research groups and startups around the world.
These institutions have aggressively sought to establish broad patent protection. In June 2006, Foley & Lardner and Lux Research released a report showing that 446 carbon nanotube patents having 8,557 claims, of which 420 claims are directed to "building block" type claims, have already been issued in the U.S.
With any newly emerging technology, the U.S. Patent and Trademark Office has the difficult task of judging the claims of the initial patent applications. The earliest patents are often awarded to claims that broadly encompass downstream products resulting from future development of the technologies. It is arguable that the PTO has been more generous to nanotube patentees than patentees of other emerging technologies for two reasons.
First, unlike other emerging technologies, nanotube research is interdisciplinary. Some nanotube patent applications can be characterized as "chemicals and materials engineering" inventions while others can be characterized as "semiconductor, electrical" inventions or "biotech, organic chemistry" inventions. As a result, until recently, nanotube patent applications were often directed to different centers for review at the PTO, and different examiners were reviewing similar applications against different prior art.
Second, in many cases, different terminology has been used by patentees to describe similar nanotube inventions. For example, "nanofibers," "fibrils," and "nanotubes" have been used to describe multi-walled nanotubes while "single shell nanocylinders," "buckytubes," "nanowires," and "nanotubes" have been used to describe single-walled nanotubes.
The number of nanotube patents and patent applications is likely to steadily increase as researchers make incremental improvements in synthesizing and integrating nanotubes into products. Looking only at the large numbers of issued patents covering carbon nanotube "building blocks," it is likely that companies seeking to make and sell nanotube-based products in a range of different industries may infringe several patents held by different entities.
As researchers continue to optimize nano materials for commercial applications, the number of issued composition of matter claims covering different types of nanotubes may increase. Under U.S. law, patentees can claim a particular species of previously known genus compositions. Therefore, if an inventor is the first to synthesize a species of nanotubes with a certain, unique property X, the patentee may be able to obtain a claim covering a selection of those unique nanotubes notwithstanding the genus of prior art nanotubes. For example, it is believed that carbon nanotubes with greater lengths might be superior to shorter nanotubes for a variety of applications. Different inventors racing to synthesize longer (and longer) nanotubes are likely to seek claims such as "nanotubes having at least a length of X." The result could be several issued patents with claims on nanotubes of different sizes. Similarly, inventors seeking to optimize the electrical properties of nanotubes might file patent applications claiming compositions of matter having different levels of resistance.
Universities and firms are filing a variety of improvement patents claiming CVD (chemical vapor disposition) using different temperatures, pressures, substrate materials, hydrocarbon gases, and catalyst materials. For example, if a university research group was the first to successfully synthesize nanotubes using CVD in a certain temperature range using a certain catalyst, feedstock gas, and substrate, then the university may be able to obtain a patent claiming synthesis of nanotubes by flowing a hydrocarbon gas over catalyst materials in a specific temperature range. The result is that several issued patents will arguably be infringed by numerous manufacturers using different processes.
John Miller is vice president of business development at Arrowhead Research Corporation, which has made investments involving carbon nanotubes. Drew Harris is an attorney with Graves, Dougherty, Hearon & Moody in Austin, Tex. They are also managing editors of Nanotechnology Law & Business, from which this article has been excerpted.
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