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Foresight Update 18

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A publication of the Foresight Institute

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Law in Technology

by Elizabeth Enayati

Elizabeth Enyati, an attorney with Fenwick & West, will answer Foresight members' questions on intellectual property issues in nanotechnology.

[Editor's Note: With this column we begin addressing intellectual property issues in nanotechnology development. What types of advances should be patented, which copyrighted, and which are best left in the public domain? Your opinions on these issues, and questions on how to protect your work, are actively solicited.]

Intellectual property is the backbone of modern industry and increasingly a driving force in modern international markets. Businesses, industries, and now international trade itself are largely based on the identification and exploitation of proprietary assets. Traditionally, these assets have been thought of as tangible goods, but now it is the value of intangible goods that is capturing the attention of managers, investors and individuals. The impact of such recognition has not escaped the scientific domain—and with good reason—for how researchers structure, value, exploit, and protect their intellectual property is becoming a determining factor in how they "do science" and "the business of science." The good news for individuals engaged in the emerging nanotechnology field is that they are on the cutting edge of both a new industry and intellectual property law.

As a patent attorney, one of the most disheartening experiences I can have is to encounter an inventor with a terrific invention—only to discover that the invention was inadvertently given away, or accidentally abandoned under the law. This column is our effort to flag crucial intellectual property issues for you in the nanotechnology field, so that such accidents can be avoided. Entitled "Law in Technology," the column will appear in each issue of Foresight Update as a forum for the exchange of ideas, sometimes in a question-and-answer format, on legal issues affecting intellectual property rights. Input from you will make the column more useful. Please send your ideas, concerns and questions about intellectual property to Foresight or to me, at the address appearing at the end of this column.

In the months ahead, we will begin by familiarizing you with the laws that govern proprietary intellectual property—across international and domestic markets. As many of you are learning firsthand, nanotechnology as an emerging field provides a particularly fertile environment for the development of intellectual property rights in the forms of patents, copyrights, trade secrets, and trademarks. Because the protection afforded to intellectual property of each type (i.e., patent, copyright, trade secrets, trademark) is through legal mechanisms, familiarity with fundamental concepts associated with each form of protection is a good first step in understanding the issues.

One critical question which frequently arises in the business of science is: "What is legally protectable (i.e., patentable/copyrightable) in the nanotechnology environment?" To put it in less "legalese" terms, "Why bother worrying about such legal stuff? It only interferes with my work." In an increasingly competitive technological environment, this attitude and approach is no longer justifiable.

First, and foremost, when approached in the right manner, assuring protection of proprietary information does not interfere with the inventive environment. At its best, protection of intellectual property becomes as integral part of the laboratory, or the computer lab environment. In point of fact, it takes no more time to take basic precautionary steps to protect proprietary information than it does to make any other lab notebook entry, or to produce software documentation (though it may be no more enjoyable than either of those activities).

Second, certain areas of nanotechnology suggest potentially fertile areas for securing a proprietary position in the marketplace. Most of us would agree that software is a key component of advances in this industry, and in view of the development of copyright and patent law, patent protection has become the preferred form of legal protection for software. Some countries still do not grant patents on software (Taiwan, Singapore, and Germany, to name a few), but many more are coming around. For a variety of legal and technical reasons, it is difficult to fit software inventions within the statutory scheme of current U.S. patent law. More on this in the months ahead. For now, suffice it to say that attorneys, legislators, and industry members grapple daily with such problems. Through this column, we will keep you abreast of ongoing developments in this area of protection.

Software also is protected, to a more limited extent, under copyright law. As in patent law, protection for software under this statutory scheme is not yet optimal. Also as in patent law, there are attorneys, legislators, and members of various industries working to adapt these laws to afford more meaningful protection for software developments. Because many inventions in the nanotechnology field may be software, or software-related, it is important to keep track of what the copyright and patent laws protect. Additional interesting "how to" protection issues posed by nanotechnology include: specific chemical modeling parameters, "open" vs. proprietary software, products generated by the technology, specific chemical designs, molecular manufacturing processes and systems, nanodevices, and the like.

But no one knows better than you the scientist/inventor, the individual involved in commercializing this technology, what proprietary information is being developed in your industry. Working together we can, through this column, provide a forum for information exchange on the types of legal protection which may be available for licensing and generally serve as a conduit for information related to protection of proprietary information in the nanotechnology field.

In closing, this column is for you, the businessperson or scientist interested in nanotechnology and its developement. It is intended to answer questions, to clarify issues, and to flag issues of interest as they arise in the legal realm of intellectual property protection for your efforts. Intellectual property is an asset. It may be personal. It may be corporate. But it is a valuable asset—and one that merits all the care and attention you can bring to its protection.

(DISCLAIMER: The material contained herein is not to be construed as legal advice or opinion.)

Elizabeth F. Enayati, Esq., Fenwick & West,Two Palo Alto Square, Suite 500, Palo Alto, CA 94306; (415) 858-7172; fax (415) 494-8022; email This column adapted with permission from an industry newsletter.

Foresight Update 18 - Table of Contents


Recent Events

The Winter Annual Meeting of the American Society of Mechanical Engineers featured a session on nanotechnology chaired by Dr. Arlan Andrews of Sandia National Laboratory. The December 2 session in New Orleans featured Dr. Eric Drexler, Burgess Laird of Los Alamos National Lab, and Dr. Andrews standing in for Dr. Clayton Teague of NIST, who was unable to speak due a firm and undeniable call to jury duty.

"Beyond Lithography: Toward Molecular Manufacturing" was the title of a talk given by IMM advisor Dr. Ralph Merkle of Xerox PARC at the Microsensors and Micromachines Conference held in Washington, DC, on December 6-7, 1993. While primarily focused on MEMS (micro-electromechanical systems), a top-down, bulk technology, the meeting was quite receptive to the bottom-up message that the goal is molecular-scale control. The bottom-up approach was also addressed by Dr. Joel Schnur, Director of NRL's Center for Bio-Molecular Science and Engineering, who covered molecular self-assembly and engineered molecular assemblies in addition to the top-down work done at the Center.

A Caltech Research Directors Conference, "Designing the Future—Materials Research and Nanotechnology at Caltech," was held on Feb. 3-4. The conference brochure states, "With its ongoing research and new faculty appointments, Caltech is becoming an international center of nanotechnology."

Foresight member Stephanie Corchnoy attended the Caltech meeting and reported that two of the talks were particularly relevant for nanotechnology: "The Role of Scanning Probe Methods in Nanotechnology" by Prof. John D. Baldeschwieler, and "New Methods for Atomistic Applications to Materials and Nanosystems" by Prof. William Goddard. (Update readers will recall that Prof. Goddard is also the research advisor for Charles Musgrave, winner of the first Feynman Prize in Nanotechnology, awarded in 1993.) Most of the other lectures, while interesting, represented a "top-down" rather than "bottom-up" approach, i.e. they discussed bulk technologies rather than dealing with precise control of molecular position and structure.

A talk on nanotechnology was presented by Dr. Drexler at the "EM2000 Symposium: Materials Technology on the Nano-scale in Year 2000" on Feb. 28 in San Francisco.

On March 7, the Nanosystems Study Group which usually meets at Stanford University held a public meeting at the Genentech Conference Center in South San Francisco. The speaker was Dr. Drexler on the topic "Molecular Machine Systems: Toward a New Basis for Physical Technology." He explained that "Molecular machine systems perform most of the digital data storage in every computer that has not been carefully sterilized. They—living things—build most of the electronic devices in the world and process most of the organic molecules. Research efforts have surveyed a path to the development of molecular manufacturing technologies, based on artificial molecular machine systems, that will replace much of our existing industrial and technological infrastructure."

The talk focused on recent progress in understanding the design of molecular machines made from synthetically accessible polymers, including proteins. An engineering approach indicated that this is more practical than the biological models might suggest. The talk paralleled the author's forthcoming article in the Annual Review of Biophysics and Biomolecular Structures (1994). The program was chaired by Tom Follett and led by Ted Kaehler. (To get on the email list for announcements of talks sponsored by the group, send email to

On March 11, Dr. Drexler spoke on nanotechnology for the YPO Seminar on the Future held in San Francisco and sponsored by the Young Presidents' Organization. Other speakers included nuclear scientist Dr. Edward Teller and complexity theorist Prof. Stuart Kauffman of the University of Pennsylvania and the Santa Fe Institute.

Also this spring, John Walker of Autodesk gave a talk on nanotechnology at EPFL—the Swiss Federal Institute of Technology at Lausanne. The audience was expected to be between 50 and 100 professors, doctoral candidates, and post-docs primarily from the Computer Science department. The talk was based his 1990 Autodesk talk on nanotechnology—published as Foresight Briefing #3—with an update covering recent research results such as polymer nanotubes, reverse engineering of the flagellum motor, SPM manufacturing of quantum confinement structures, laser deposition of nanoscale wires, and so on. Part of the especially European challenge was addressing a common attitude there: "What does this have to do with computer science? Isn't this just a hardware technology?" Those of us who saw his 1990 talk expect that this question was answered successfully.

In early April, microbiologist Dr. Bärbel Hüsing visited Foresight to interview Dr. Drexler for a study including "bionanotechnology" commissioned by the German Federal Ministry of Research and Technology. The study is examining work in Japan, the U.S., France, the U.K., and Germany, with the goal of identifying new developments and potential applications of biomolecular systems including information processing, functional materials, and micromechanics. The final report is expected out in late summer 1994 and will be covered in a future issue of Update.

As we go to press...

Drs. Drexler and Merkle are both departing for the NATO Advanced Research Workshop on "Ultimate Limits of Fabrication and Measurement" being held April 5-8 in Cambridge, England. Dr. Drexler is scheduled to open the meeting with a talk on molecular manufacturing, and to serve on the closing panel. Dr. Merkle's talk is on "Self Replicating Systems and Low Cost Manufacturing." Other speakers include Prof. M. Aono of the Aono Atomcraft Project, Dr. Don Eigler of IBM (who spelled the word IBM using individual atoms with an STM), Nobel winner Dr. Heinrich Rohrer also of IBM (coinventor of the STM), and Dr. Clayton Teague, editor of the journal Nanotechnology. The proceedings will be published as part of a special issue of the Proceedings of the Royal Society and will also appear in the NATO ASI Series by Kluwer Academic Publishers.

Ted Kaehler of Apple Computer is preparing his opening keynote address for the Oak Ridge Conference: Nanotechnology—the Challenge of Microminiature Analysis, to be held April 14-15 in Tampa, FL, by the American Association for Clinical Chemistry. Entitled "Nanotechnology: the Impending Revolution," the talk will address how a logical extension of today's biotech revolution will give us control of molecules generally, and what this will mean. The American Association for Clinical Chemistry is primarily concerned with medical instrumentation, especially that working in vivo rather than in the lab; their interest in nanotechnology includes looking forward to nanotechnology-based medical tools small enough to carry out repairs within the body, such as removal of plaques within arteries.

Also in preparation is Dr. Drexler's talk for a May 3 workshop being held at MCC in Austin, TX, on recent developments in technology in Japan. He will address molecular manufacturing and its relationship to long-term developments in intelligent manufacturing.

Foresight Update 18 - Table of Contents


Upcoming Events

International Workshop on Low Power Design, April 24-27. Napa, California. Sponsors ACM and IEEE. Includes session on reversible logic moderated by Dr. Ralph Merkle. General Chair Massoud Pedram, tel 213-740-4458, fax 213-740-9803, email

Nanofabrication and Biosystems, May 8-12. Kona, Hawaii. Cosponsors NSF, NIH. Includes self-assembly of biological materials as target for exploitation by materials scientists and engineers. Engineering Foundation, tel 212-705-7836, fax 212-705-7441.

Fort Collins' 2nd Annual Nanotechnology Conference, May 14-15, $170-200, $99 student, $60 half-day. Ft. Collins, CO. Molecular robotics, molecular computing, applications, computational nanotechnology, current status, and next steps. Speakers include Ralph Merkle, Eric Drexler, Gayle Pergamit. M. Glennie, tel 303-484-8184.

International Space Development Conference, May 26-30, $75-110, student $25-35. Toronto, Ontario. Includes lecture by Eric Drexler, workshop entitled "Molecular Manufacturing: the Fast Path to Space" with Drexler and Foresight director Jim Bennett, and chapter meeting of the National Space Society's Molecular Manufacturing Shortcut Group led by treasurer Steve Williams. ISDC, tel 416-626-0505, fax 416-626-0792.

Ordered Molecular & Nanoscale Electronics, June 5-10, Kona, Hawaii. Molecular electronics, molecular manipulation, spontaneous assembly, single-electron devices. Engineering Foundation, tel 212-705-7836, fax 212-705-7441.

Simulation for Molecular Nanotechnology & Molecular Manufacturing, a track at the Summer Computer Simulation Conference, Society for Computer Simulation, July 18-20, San Diego, CA. Conference admin. Dennis Baker, tel 410-787-3736; track organizer Tom McKendree, tel 714-374-2081, email

Frontiers in Science and Technology at Nano-Micro Scale, July 28-29, Guaruj, Brazil. Sponsored by Brazilian Vacuum Society; abstract deadline April 30. Fax 55-192-39-13-95, email

International Conference on Molecular Electronics and Biocomputing, Sept. 25-30, Goa, India. International Society for Molecular Electronics and Biocomputing. Biomimetic, supramolecular, self-assembly processes; proximal probes (STM, AFM); molecular sensors; nanomanipulation. Dr. R. Phadke, fax +91-22-215-2110, email

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From Foresight Update 18, originally published 15 April 1994.

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