Enayati, an attorney with Venture Law Group, answers Foresight
members questions on intellectual property issues in
In the last issue of Foresight Update, I discussed
the mechanics of what changes are imminent in US patent law under
the Uruguay Rounds Agreement Act (or the GATT Implementation
Act). Now that you have had a chance to mull over the nuts and
bolts of those changes, I want to highlight some important issues
raised by the new laws that specifically concern the
20-year Term. As you may recall, the present US patent
system grants patent rights to the first inventor for a period of
17 years measured from the date the patent issues. The US patent
system also includes some mechanisms for filing a patent
application on DAY1 (e.g., July 1, 1990), and then subsequently
adding new data and information by filing a second patent
application (known as a continuation-in-part application) on DAY2
(e.g., July 15, 1991), while preserving the original DAY1 filing
date. It is possible to file an entire string of patent
applications in this manner so that the patent that eventually
issues contains all or a portion of the first application, and
all or a portion of subsequent generations of that application.
This could potentially continue for years. In a first
hypothetical, let's say the first application is filed on July 1,
1990, a final continuation-in-part application is filed on July
1, 1994, and a patent issues on August 1, 1995. In this first
hypothetical, and under the current US patent law, the patent
holder is entitled to a maximum of a 17 year term, beginning the
day the patent issues (i.e., August 1, 1995) and ending on August
Now, in a second hypothetical, suppose the last application is
filed on July 1, 1995 (as you may recall, the new 20-year
patent term applies to patent applications filed on or after June
8, 1995), and issues as a patent on June 1, 1996. The
patent holder in that instance would obtain a patent with a
maximum term of 20 years as measured from July 1, 1990
(the date of the first US patent application filing date). Since
patent rights are not enforceable until the patent issues (that
does not change under the new law), the patent holder has lost
three years off of the patent term (i.e., 17 years under the
current law less 14 years under the new law).
So what does this mean? In a research setting, such as at a
university, there is a tremendous amount of incentive, if not
actual pressure, for scientists to publish the results of their
research. As a consequence of this "publish or perish"
system, in conjunction with the heightened awareness at most
research institutes of the tremendous monetary value royalties
bring to the institution based on proprietary technology
developed by their faculty and staff, patent applications
historically were filed on early-stage research. The idea was to
file early, then take advantage of the patent system by filing
continuation-in-part applications adding data and other
information to the application to make any resulting patent a
fiscally, if not commercially valuable resource.
However, if patent terms now are to be calculated from the
earliest US priority date for that patent, inventors who file
early may lose valuable time at the enforcement end. The decision
whether or not to file a patent application will require a
balancing of even more competing interests: scientists' interests
in making their work public versus institutes' interest in
obtaining broad patent rights that will bring significant
royalties for as many years as possible. Because patent
applications in each discipline have different pendency periods
in the Patent Office (e.g., several years for biotechnology
patents, even longer for "pioneering patents," and a
couple of years for mechanical, most chemical, and electrical
patents), the type of technology involved also will be a factor
in deciding the timing for filing a patent application. Whether
this will "promote the arts and useful sciences," as
mandated by the US Constitution, or ultimately stifle early
dissemination of such "useful sciences" remains to be
seen once the new law has been in effect a few years.
Provisional patent applications. In an attempt to
compromise with institutions, due to the perceived inequities
formed by the new patent term, as described above, the new patent
law creates a new type of patent application: the
"Provisional Patent Application." This new application
is touted as an inexpensive alternative to a "complete"
patent application, and is expected to have a filing fee of as
little as $75 (the filing fee for a complete application is at
least $365 ). As represented by the US Patent Office, an
applicant may file a Provisional Application to preserve an early
filing date, and will have up to 12 months from that filing date
within which to file both a complete US application and any
foreign applications, effectively deferring the full costs of
patent filing for 12 months, without losing any time off the 20
Unfortunately, as with most bargains, Provisional Applications
are not such a great bargain. As a starter, there is a
requirement that the Provisional Application satisfy all of the
statutory requirements of enablement and best mode (35 U.S.C.
§ 112). In fact, the only significant advantage of the
Provisional Application is that it may be filed without a single
claim. However, since the claims define the invention, and the
application must contain sufficient disclosure to enable the
claimed invention, most applicants will need to draft at least
one claim just to determine whether the rest of the application
satisfies the statute! Thus, an applicant will need to spend
nearly the same amount in patent attorney fees to file a valid
Provisional Application as that applicant would spend to file a
complete application at the outset.
It is a rumor that some law firms are offering to file
Provisional Applications for low, flat rate fees (I have heard
the number $1,000 more than once in connection with such
applications). However, if the Provisional Application is not
carefully reviewed to verify that it satisfies the substantive
statutory requirements, any patent that may subsequently issue
and that relies on the priority date of that Provisional
Application, risks significant enforcement issues down the road.
Although Provisional Applications may be a useful tool in patent
portfolio management, beware that such applications also may be
significant traps for the unwary and may signficantly undermine
the strength of an issued patent relying on such an application.
In the nanotechnology disciplines, the change in US patent law
highlights an issue that most in the field grapple with on a
fairly routine basis: the conflict between protecting proprietary
information and dedicating such information to the public domain;
i.e., patent versus publish. The new law presents even more
challenges to those inventors making such decisions. Much, but
certainly not all, of nanotechnology research involves
ground-breaking or pioneering technology. However, the ability to
obtain significant proprietary protection for such technology
under the new law will present new challenges. Fundamental to the
question of when to protect is the question of how to protect. I
plan to address that issue in the next Law in Technology column.
Your comments on these topics always are welcome.
"Legal Problems of Nanotechnology: An Overview,"
by Frederick A. Fiedler and Glenn H. Reynolds, Southern
California Interdisciplinary Law Journal, Vol.3, No.2, pp.
Fiedler and Reynolds have produced the first law journal article
examining nanotechnology issues, including some early thoughts on
the direction regulation might take. Reynolds, a law professor at
University of Tennessee, has been following nanotechnology issues
for many years through his involvement with the National Space
Society. Fiedler, an MD and law student, brings a strong medical
perspective to the piece.
The authors start with a layman's introduction to the technology
itself, then explain the dangers of both under- and
over-regulation. Readers of Foresight Update will already
be familiar with potential dangers caused by abuse or accidents;
we may be less aware of the dangers of over-regulation, partly
because these are harder to see.
For me, the paper's most vivid point is its explanation that
"the British Explosives Act of 1875, which forbade all
private rocketry experimentation, caused British rocketry
enthusiasts to fall behind others--like American Robert Goddard
and the German Wernher von Braun--with dramatic results."
Dramatic, indeed--now there's an understatement. The lesson for
nanotechnology: to the extent regulation is needed, implementing
it in one country is not the answer.
"As Cass Sunstein notes, 'Stringent regulation of new risks
can increase aggregate risk levels'...The reason is that new
technologies, which in general tend to be safer than old
technologies, are often subjected to more stringent regulation
simply because they are new. The result is often the perpetuation
of riskier (but politically more powerful) existing industries at
the expense of safer new technologies that do not have a built-up
base of political support."
Potential medical applications and related regulatory issues
receive extensive attention: will medical nanotechnology
treatments be viewed as drugs or devices? Medical misuse is
discussed, along with some of the more radical medical
applications such as very long-term life extension.
On intellectual property issues: "In a world in which nearly
any object could be manufactured on-site from inexpensive
materials, the only really worthwhile property rights may be in
intellectual or cultural property. Even if objects can be
'home-grown' using general purpose manufacturing devices
employing nanotechnology, the 'plans' for constructing such
objects will still be valuable. We may see a near-complete
separation of design and manufacturing, at least in some fields.
If that is the case, intellectual property in software, designs,
and so on will become far more valuable, and criminal sanctions
against, say, 'counterfeit' designer goods are likely to be much
greater. Likewise, unique objects like oil paintings, handcrafts,
and so on may become far more valuable even if indistinguishable
from machine-made duplicates, simply because they are
Many other effects of nanotechnology are touched on in this
high-level overview- -far more than can be covered here. We
suggest a visit to your nearest law library.
Chemical & Engineering News (April 17) covered work
by Peter Schultz and Paul McEuen at UC Berkeley combining
proximal probe techniques with molecular self-assembly: making an
AFM tip into a precision catalysis device by coating the tip with
platinum. C&EN points out that this is a step toward
"nano manufacturing": "carrying out highly
localized chemical catalysis to create high -resolution
structures on a surface." A quote from IMM's Eric Drexler
terms the work "fascinating."
[Editor's note: For more on the work of Schultz and
McEuen, see Update
NPR's popular "All Things Considered" radio program
discussed work done by a group of scientists studying friction at
the atomic scale. They reported that friction operates very
differently at the atomic scale. (For a theoretical description
of the differences between friction at the macroscale vs. at the
nanoscale, see Nanosystems.)
Receiving wide coverage were speculations on "the
technological breakthrough which will have the biggest impact in
the next 50 years" forecasted by the National Engineers week
"All-Stars," a diverse team of men and women which
included corporate executives, astronauts, elected officials,
heads of government agencies, President Clinton's science
advisor, and engineers in nontraditional fields like sports and
entertainment. The All-Stars were surveyed in conjunction with
National Engineers Week. From the NewsEDGE wire service:
"Nanotechnology and biotechnology may, according to these
experts, rival the continuing communications revolution in
shaping day-to-day life in the first half of the 21st
century...When it came to predicting the next major technological
achievement, both J. Winston Porter, president of the Waste
Policy Center and the former head of the U.S. Environmental
Protection Agency's efforts on solid waste, and Wesley Harris,
associate administrator for aeronautics with NASA, found common
ground in nanotechnology. They expect these tools, working on the
molecular scale, to perform sophisticated new tasks, especially
A World Wide Web essay on nanotechnology was published as part of
the mid-April online magazine HotWired.
Author Chris Peterson was interviewed
online on April 19 by HotWired readers. The
publication has given permission for Foresight to post this
essay at the Foresight Web site.
Newsweek's May 1 issue included a column by Steven Levy on
Adleman's DNA "computer," closing with "While
we're struggling to assimilate the effects of the breakthroughs
we've already seen, those damn innovators keep coming up with new
ones. If biology and computers truly join forces, though, the
changes will probably be so pervasive that no one will be able to
escape them. The speculation ranges from supermedicines to
nanotechnological 'assemblers' that rearrange atoms as easily as
Lego blocks. So brace yourselves..."
Coverage in the UK included articles in The Times (Feb.
27), The Independent Magazine (March 18), and The
Guardian (May 4).
A timing prediction from Government Technology (March):
fully-implemented nanotechnology will be widespread in 40 years.
Longer than Foresight's guesses, but close enough for government
Computation-rich, adaptive, self-organizing nanotechnology
products are described in The Futurist's January-February
article on the "nanoplastics" design work of Prof.
Charles Owen and students at the Illinois Institute of
Technology. This is a picture of the effects of nanotechology on
And in a belated mention, Robert Malone, Editor of Managing
Automation, d escribed nanotechnology in his December column
entitled "Honey, I Shrunk the Factory," stating
"It is very difficult to argue with these future directions
given what has already happened and what is being tested in labs
around the world. We might do well to start thinking of the
impact on jobs, design and manufacture, distribution, and
business in general. Small manufacturing units with enormous
intelligence could change the way we live, work, and organize our
industries. It could also impact energy use, the need for
transportation, and communication technology. What used to be
bread and butter for science fiction is now becoming grist for
the mills of reality."
Speaking of fiction: The Diamond Age, a
nanotechnology-based novel by Neal Stephenson, is receiving
positive reviews in the press and by Foresight members.
Finally, taking the prize for oddest media mention is Reed's
Security Reporter (March), which credits nanotechnology for
making possible a new type of lock now on sale.
We realized recently that it is getting to be a challenge even
to keep track of all of those who should be thanked in each
issue: there are so many now. Here are a few not credited
elsewhere in this issue:
Thanks to Senior Associates Marc Arnold and Chris Portman for
making the Feynman Prize in Nanotechnology possible this year.
Thanks to Jim Lewis and James Gallagher for being the first to
donate to the Web Enhancement Project.
Thanks to Elaine Tschorn, our new contractor, for so rapidly
straightening out Foresight's bookkeeping. We're very glad to
have her with us. Thanks to Gayle Pergamit for recruiting Elaine.
Thanks to Niehaus Ryan Haller Public Relations for their ongoing
assistance to Foresight's efforts to educate the public via the
media. Just now, this work is focused on the fall conference and
the Feynman Prize.
Thanks to Bob Schumaker for his help in getting our database to
handle accent marks in foreign addresses correctly.
Thanks to Global Business Network for bringing their members to
up to date on nanotechnology at their Annual Forum.
Thanks to the ever-larger group of Web participants and experts
who are advising Foresight's Web Enhancement Project. Thanks to
Senior Associates Jim Gallagher and Jim Lewis for kicking off the
fundraising effort on this project.
Thanks as always to the many members who help make sure that we
see as many relevant articles and other forms of information as
possible: Serge Avila, Jake Carter, Jeff Cavener, William Cooper,
David Cornell, Brian Cox, Allan Drexler, Dave Forrest, Tom Glass,
Jones Hamilton, Fred Hapgood, Aleksander Herman, Graham Houston,
Stan Hutchings, Seán Jackson, Anthony Johnson, Marie-Louise
Kagan, Stephen Kramer, Kevin Lacobie, Tom McKendree, Scott
MacLaren, Joy Martin, Russ Mills, Anthony Napier, Bryn Ostby,
Mark Reiners, Jim Rice, Steve Vetter, Kai Wu.
In our last issue, we suggested contacting Future Quest for
videotape copies of their program on nanotechnology. Now we learn
from member Jake Carter that these tapes will not be ready for
months. The company suggested that interested members ask their
local public television station to air the show again, and tape
it during that showing. Or, you can wait a few months and contact
Future Quest, Producers Entertainment Group, 9150 Wilshire Blvd,
Suite 205, Beverly Hills, CA 90212 (note corrected address).
Industrial Robot, a publication from the UK, described
nanotechnology work in the UK and France in an article titled
"Nanotechnology Update" (Vol. 21, No. 2, pp. 33-34).
Foresight and our Feynman Prize were covered as well. However,
it's clear that in Europe the word nanotechnology is
predominantly used to describe top-down technologies which are
not molecularly precise, along with some proximal probe work.
These primarily top-down groups include the LINK Nanotechnology
Programme (part of the UK's National Initiative on
Nanotechnology), the Nanotechology Forum, and France's Club
Nanotechnologie. We're looking into these and will have more
coverage in later issues.
The following is an excerpt from the January 31, 1995,
testimony of Ron Brown, Secretary of Commerce, before Senate
subcommittee on Science, Technology and Space:
As device miniaturization progresses toward 2015, we will soon
need to build and characterize devices whose typical size is just
a few atomic diameters. There currently are profound limitations
to our ability to measure, fabricate, characterize, and
understand atomic scale devices. NIST [National Institute of
Standards and Technology] has begun a new nanotechnology
initiative specifically to enhance our current capabilities to
make and study nano-structured materials.
On March 16, 1995, Dr. Scott Pace testified before the
House Committee on Science's Subcommittee on Space and
Aeronautics. Dr. Pace is chair of the National Space Society's
Policy Committee. Excerpts follow:
"The National Space Society
is dedicated to the creation of a spacefaring civilization and
the establishment of communities beyond the Earth. Our mission is
to promote change in social, technical, and political conditions
when people will live and work in space. We believe that the
technologies and industries created on the space frontier will be
of benefit to all humans in the coming century. We further
believe that opening the space frontier will create new
opportunities for human life, liberty, and the pursuit of
"The National Space Society does not believe that the
settlement of the Solar System can be accomplished with any
single government program or even the cooperative efforts of many
governments. Rather, space development and settlement will occur
most effectively when the economic, technical, and social
conditions allow individuals and non-governmental organizations
(such as private firms and non-profits) to move into space on
"Another exciting area of technical potential is that of
nanotechnology... Molecular manufacturing or the manipulation of
matter at the level of individual atoms may allow us to go
further and the same interplanetary spacecraft could shrink to
the size of a laptop computer on that desk. Molecular
manufacturing is similar in many respects to molecular biology.
In cells, molecular machines make biological components. Systems
to guide molecular level assembly and the precise control of
chemical reactions can help minimize waste and defects, producing
systems of uniquely high quality. This means aerospace structure
with over 70 times the strength-to-weight ratio of aluminum. In
can mean being able to place the computing power of a billion
modern workstations in a desktop package--while producing less
waste heat than a light bulb.
"The beginning of the industrial revolution was
characterized by massive, wasteful, inflexible machines. Old
technology did not conserve resources, but consumed them,
creating pollution along the way. Today, technologies are
available which can create the things we need with dramatically
fewer resources and waste. The next century could see the
flowering of a new manufacturing revolution, symbolized by tiny,
efficient, and intelligent machines traveling outward from the
Earth to explore new worlds. Hopefully, with humanity close
An online Nexis search for the term nanotechnology and common
variants has been done, covering a wide variety of popular print
media: magazines, journals, newspapers, wires, newsletters, and
Note the growth through 1991, a slowdown of the rate of growth in
1992-93, and a resumption of a higher rate in 1994. This is
thought to reflect a natural process of waves of interest flowing
through the media as they discover, lose interest in, and then
rediscover nanotechnology concepts.
Alternatively, the 1992-93 period may have been a time of
shakeout: U.S. researchers doing "top-down" research
may have reduced their use of the terms as they became aware that
it already has a more specific meaning in the minds of readers.
If so, the resumption of a higher growth rate in 1994 reflects a
greater acceptance of molecular ("bottom-up")
nanotechnology as a goal. This last point is supported by
increasing numbers of scientists and others making public
statements advocating molecular nanotechnology and molecular
manufacturing (see this issue and Update 20).