Nanotechnology Facing Patent Labyrinth

Alexander E. Braun, Senior Editor -- Semiconductor International, 11/19/2007 3:54:00 AM

Nanotechnology is advancing at a dizzying rate, but profitable commercialization is being hindered by looming legal issues, as uneven worldwide patent enforcement is forcing companies to resort to trade secrets to protect their hard-won nanotechnology innovations.

A panel of industry experts at the recent NanoCon International conference in Santa Clara, Calif., considered several hurdles — ranging from legal considerations to scalability and cost — facing nanomaterials manufacturing.

“For nanotech to become a true industry, it must consistently deliver application-tailored quality material in sufficiently large qualities — whether kilogram or kiloton,” said Dave Arthur, CEO of SouthWest Nanotechnologies (SWeNT, Norman, Okla.). “Many potential customers won’t begin product development unless they know that we’ll be able to provide material at those kinds of scales.”

Then there is cost. Although nanotech materials deliver high value at small quantities, not many applications can support costs of thousands or even hundreds of dollars per gram. The processes that produce these materials must become more scalable. Manufacturing scalability to a great extent is a matter of achieving sufficiently uniform heat and mass transfer in processes, but there exists a chicken-and-egg situation regarding the needed investment to attain this.

“In an academic setting, nanomanufacturing means making one or two,” said Professor Joey Mead, deputy director of the Center for High-Rate Nanomanufacturing of the Department of Plastics Engineering at the University of Massachusetts Lowell, which is part of the National Science Foundation's Nanoscale Science and Engineering organization. “If you toss 99 to get a good one and can publish results, that’s sufficient; not so for commercial manufacturing. For that you must really understand the manufacturing fundamentals to enable industry to develop them for large-scale manufacturing.”

Panel moderator Kelly Kordzik, an intellectual property lawyer at Fish & Richardson P.C. (Austin, Texas), said some patents lie dormant like monsters out of an old Japanese sci-fi thriller, waiting to be awakened to wreak havoc. “When the technology was getting started,” he said, “broad and fundamental patents were filed by both universities and companies.”

Since presently there is not enough profit to be had in nanotech patents, there has been no appreciable litigation to entangle development or frighten away venture capitalists. However, there is an unholy race between nanotech’s progress toward high-volume commercialization, and these older patents’ expiration dates. When valuable applications start breaking en masse into the commercial world, making significant profits, many expect that these patent holders will attempt to enforce them, possibly leading to complex and paralyzing patent fights.

Barry Drayson, CEO of NanoComposites (The Woodlands, Texas), said that much of what happens in nanotechnology takes place in a corporate context, and one may not hear about it. “There’s considerable silent activity in corporate labs.”

Drayson expressed doubts about the present value of patenting nanotechnology. When his company started, it acquired its original patents from academia. “Since then, we haven’t patented anything, partly because there are some 500,000 new patents from five countries,” he said. “Frankly, we’ve taken the trade secrets route in everything we do in the laboratory, because there are nations that aren’t as honorable as the United States and European countries. They treat your patents as technology shortcuts.” Drayson added that a patent is of little help in litigation. “You must have several patents, so that people realize that if they get a lucky decision on the first, they might not have one for the second or the third.”

The panelists questioned whether a roadmap similar to the International Technology Roadmap for Semiconductors (ITRS) might benefit nanotech. Mead said this was a regular subject of discussion at the National Science Foundation (NSF), with some scientists fearing that a nanotechnology roadmap might limit development.

Alan Gotcher, president and CEO of Altairnano Inc. (Reno, Nev.), which makes ceramics-based nanomaterials used by the automotive industry, said nanotechnology “affects all of materials science. Its boundaries are still undefined and, considering the diversity of materials and possibilities, I don’t see how a single roadmap could be drafted. The semiconductor industry has common product formats, and a decades old track record. Nanotech does not. When standardization comes, we may see the beginnings of a roadmap.”

However, panelists agreed that a nanotech metrology roadmap would be useful now. The industry needs new, rapid online measurement techniques to streamline characterization if it is ever to become available in the hoped-for volumes.