Aug. 4, 2006 - On Thursday, Tokyo-based NEC Corp. concluded a carbon nanotube patent licensing agreement with Norman, Okla.-based SouthWest NanoTechnologies Inc. The move is one of what are likely to be many more efforts to stake claims to nanotech's critical intellectual property and advertise those claims to would-be licensees.
The carbon nanotube is a core material for nanotechnology, and is expected to be used in a variety of applications, including flat panel displays, high performance transistors, fuel cells, ultra-sensitive sensors, and conductive coatings. Its broad applicability makes it both ripe for commercialization and, experts say, a likely bone of contention as various entities grapple over ownership rights.
What's more, those battles are likely to be exacerbated by a nano patent backlog. A new report says nanotech patent applications have grown by 20 percent annually in recent years, significantly outpacing overall patent applications, which grew only two percent. However, while applications have soared in number, the actual issuing of nanotech patents has not kept pace. It was less than five percent in 2005.
The new report, issued July 25 by New York-based Lux Research in collaboration with Boston-based IP law firm Foley & Lardner, outlines the problems it perceives for nanotech and attempts to provide a roadmap for operating in the nanotech patent arena and for determining which patent battles are worth fighting.
The report found that overlapping claims, and an increasing amount of legal action over claims, has caused a logjam at the U.S. Patent and Trademark Office and pushed the patent "pendency rate" -- the period from the submission of a nanotech application to the issuance of the patent -- to an average of nearly four years, up from two and a half years in 1993.
It also found that nanotech patent ownership is concentrated. Global corporations, led by IBM, own 59 percent of nanotech patents. Only 95 entities own half of all nanotech patents.
"We mapped out the landscape using eight nanomaterial platforms, from carbon nanotubes to nanowires, across five major applications," said Vahe Mamikunian, an analyst at Lux Research. "We found that some areas had a high level of white space, and other places were quite crowded."
"For carbon nanotubes used in electronics, for example, there were many patent applications, and they tended to overlap in terms of the amount they reference each other. In other areas, such as nanowires, we found relatively little patent activity, and the few patents there don't reference each other," Mamikunian said.
The patents were then further analyzed to determine whether the invention addressed a potentially mass market, the relevance of the nanomaterial to the application, whether it can be used to improve other products, and whether the impact is marginal or disruptive to the product's market.
As this week's move by NEC clearly suggests, carbon nanotubes could one day yield lucrative licensing revenue streams and are therefore worth fighting for, as are quantum dots, the report concluded -- even though the space is crowded and the likelihood of legal action is high.
That's because these technologies are relevant to a number of large addressable markets, argue the report authors. Similarly, they think that patent battles over dendrimers and ceramic or metal nanoparticles are also likely, but their broad applicability in health care and cosmetics would justify a company putting up a fight over ownership rights.
Broad applicability across many valuable markets adds value to carbon nanotube patents too. Though terms were not disclosed about the NEC-Southwest deal, the companies did acknowledge -- not surprisingly -- that it was non-exclusive.
Source: http://www.smalltimes.com/document_display.cfm?document_id=11979
