SOCIETAL AND LEGAL
ISSUES RAISED BY
NANO PATENTS
Investigators:
Lori B. Andrews, J.D. &
Julie A. Burger, J.D.
Institute for Science, Law & Technology
Illinois Institute of Technology
This material is based upon work supported by the National Science Foundation
(NSF) under grant SES-0508321 and the Office of Science, U.S. Department of
Energy (DOE) under Award Number DE-FG02-06ER64276
Research Activities and
Methodologies Used
Review of case law, statutes, scholarly
articles, scientific articles and all patents
claiming quantum dots.
This allowed analysis of the societal and legal
issues raised by patents on nanotechnologies
and the impact intellectual property law would
have on the development and use of
nanotechnologies.
State laws governing nanotechnologies
focus almost exclusively on
funding aspects.
Arkansas provides a tax credit for up to
half the cost of the purchase or
construction of a facility which designs or
develops devices which are reliant upon
nanotechnology.
Ark. Code Ann. § 15-4-2104 (West 2006)
The number of nanopatents has been
overestimated by prior researchers.
A prior researcher’s search for patents
containing “nano” resulted in 96,000
hits.
We searched three decades of the USPTOs
electronic patent database for patents with
quantum dot or nanocrystal in their title. We
found 280 patents with a total of 5,675 claims.
Fluorescent image of a mouse injected with cancer cells tagged with redemitting quantum dots, quantum dot-tagged cancer cells, and a single cell
in which the individual quantum dots are visible (courtesy of Shuming Nie)
280 patents issued between July
1976 and July 2006 claim quantum
dot technology:
17.9% claim particles over 100
nanometers and therefore do not
meet the NNI’s well-known definition
of “nanotechnology.”
27 months was the average time from date
of application to date of patent issuance.
Of the 5,675 claims in patents that
contain “quantum dot” or
“nanocrystal” in their title….
Process or method
claims - 45%
Manufacture or machine
claims - 28%
Composition of matter
claims - 20%
Improvement thereof
claims - 3%
Product by process
claims - 2%
Funding of Quantum Dot Patents Per Federal Agency
AFOSR; ARL; DARPA
3%
SPAWAR/DARPA
2%
AFOSR
AFOSR; ARL; DARPA
AFOSR; NASA; ONR; NSF
AFOSR
2%
AFOSR; NASA; ONR; NSF
2%
AIR FORCE
2%
NSF; AIR FORCE
3%
ARL
2%
AIR FORCE
ARO
3%
ARL
ARMY; DOD
ARO
ARMY; DOD
2%
NSF
31%
ARPA
2%
ARPA
DOE
DOE; NSF
GOVT INTEREST
GOVT LICENSE
NASA
DOE
34%
NAVY
NAVY; ARO; DARPA
NAVY; ARO; DARPA
2%
NSF
NSF; AIR FORCE
SPAWAR/DARPA
NAVY
2%
NASA
2%
GOVT LICENSE
3%
GOVT INTEREST
5%
DOE; NSF
2%
Examiner Experience
8-9 Patents - 0.7%
6-7 Patents - 3.4%
10+ Patents - 1.4%
5 Patents - 2.7%
4 Patents - 2.7%
3 Patents - 9.5%
2 Patents - 13.6%
66% of Examiners
Examined
Only 1 Patent
The application of certain aspects of patent law
(such as the strict liability standard for infringement)
to nanotechnology is problematic.
Government agencies are applying
inconsistent approaches to nanotechnology.
Examples: Bone implants; Antimicrobial silver wound dressings
Publications
Lori Andrews, J.D., Jordan Paradise, J.D., Timothy Holbrook, J.D.,
and Danielle Bochneak, B.S.E., “When Patents Threaten Science,”
Science (December 1, 2006).
Julie A. Burger, Marianne R. Timm, and Lori B. Andrews,
“Nanotechnology and the Intellectual Property Landscape,” in
Nanoscale: Issues and Perspectives for the Nano Century (edited by
Nigel Cameron and Ellen Mitchell) (Hoboken, New Jersey, John
Wiley and Sons, Inc., forthcoming 2007).
Jessica K. Fender, “Patenting Trends in Nanotechnology,” in
Nanoscale: Issues and Perspectives for the Nano Century (edited by
Nigel Cameron and Ellen Mitchell) (Hoboken, New Jersey, John
Wiley and Sons, Inc., forthcoming 2007).
Marianne R. Timm, “Nanotechnology: U.S. State Government
Promotion Through Legislation,” Nanologues, Series 3.2006.
Letter from Lori Andrews, et al., Institute for Science, Law &
Technology, to The Honorable Jon Dudas, Director, United States
Patent and Trademark Office (July 31, 2006).