Of the currently emerging technology trends, nanotechnology IP seems to have grabbed the attention of many universities. The term, ‘nanotechnology’, describes a broad range of technologies that span multiple technical fields. From nanowires used in semiconductors, to heat transfer fluids and compounds for use in electrical circuit boards, the applications of nanotech are seemingly endless.
A much-publicised application of nanotechnology that has the potential to impact on our everyday lives is graphene. Graphene is many times stronger than steel. It’s light, capable of conducting heat and electricity, and is transparent. It is evident that there are many potential applications for graphene and it’s no surprise that since its characterisation in 2004 by Andre Geim and Konstantin Novoselov at the University of Manchester, there has been significant hype regarding this new wonder material.
It’s not surprising that there has been significant university investment in patents relating to nanotechnology in the past 20 years. You can see in the graph below that very few patents were filed globally in 1995, which specifically used a derivation of ‘nano’ in the claim (232 patents published in 1995; only English language patents searched).
In the 20 years since, the number of nanotechnology patents published each year increased dramatically, to a peak of 14,000 in 2012. Since 2012, annual patent filings have fallen to just under 4,000 in 2016. This trend coincides with the initial uptake of nanotechnology – many broad patent applications were published that describe the underlying technology. More recent patents are typically more narrowly focused on perhaps a specific application, or process improvements, or in some cases entirely new ways of using nanotechnology.
The sheer number of patent applications being filed in the arena of nanotechnology (52,000 in total, by 2012), not only by universities but also corporate entities, means that the intellectual property landscape around nanotechnology is very crowded. For example, a search for nanowire* on Patbase (Title, Claims and Abstract) returns 11,365 patent families that an entity would have to consider and design around to commercialise a nanowire-based product.
Developing Nanotechnology IP in Industry: Due Diligence is Crucial
For a corporate entity involved in the development of nanotechnology, it is important to carry out the necessary reviews to avoid infringing any third party intellectual property rights. It is also important for a corporate entity to carve out its own ‘IP space’, through further development of their target technology or through licensing or acquisition of technology and associated intellectual property.
When licensing or acquiring intellectual property rights, the due diligence process is critical. Due diligence activities are common across all technology sectors, in that it is important to identify what the relevant patents seek to protect; are the patents valid and are there any freedom to operate risks?
However, there may be niche considerations in some sectors. For example, in the healthcare sector, any data developed by a university may need to be disclosed to regulatory authorities. A corporate entity operating in the display technology space may need to ensure that they receive all necessary know-how in relation to a technology so that it can be exploited. It is also important to check that key know-how, i.e. proprietary algorithms, have been maintained as trade secrets.
The onus is ultimately on the licensee or acquirer to satisfy themselves that the intellectual property is a good investment. The university (or whoever else the intellectual property is being licensed or acquired from) will typically give a warranty stating that they are not aware of any third party rights that the target IP would infringe. It is not enough to simply rely on the warranty, as, it is uncommon for a university to have undertaken comprehensive freedom to operate searching. Even if it has, a corporate entity would be well advised to verify this.
Developing Nanotechnology IP in Universities: Confidentiality is Key
For universities, ongoing research and investment into new nanotechnology applications and platforms would seem to promise a rewarding return on investment, with no shortage of corporate entities to attract as potential licensees. Typical returns for universities might include an upfront fee upon signing a licence agreement, milestone payments as the technology is further developed externally, and ongoing royalty payments.
Furthermore, the university might be engaged by a corporate entity to provide services to further develop the technology. Of course, the university will still retain the right to publish work it undertakes as part of its charitable status, but this must be balanced with the corporate entity’s need to keep information confidential until protected through patent applications.
For anyone involved with the development of new technology, nanotechnology or otherwise, it is crucial that any information relating to the technology is kept confidential, at least until patent applications are filed. It is, therefore, good practice for universities and corporate entities to enter into a confidentiality agreement at the outset of discussions. As the relationship progresses, further agreements might be needed such as material transfer agreements, if either the university or corporate entity wish to evaluate some form of material developed by the other party.
At some stage, the corporate entity might request the university to undertake some form of services. Examples include; a healthcare company requiring cell culture analysis of a graphene wound dressing, or an electronics manufacturer seeking assistance in the design of nanowire-comprised semiconductors.
At every stage of an IP collaboration, the relevant contracts need to be carefully crafted to ensure that information is kept confidential, the ownership of arising intellectual property rights is clear, and the rights of the relevant parties are set out definitively. In many respects, the contracts that set out the relationship between a university and a corporate entity are as important as the intellectual property rights themselves.
If you would like any advice in relation to protecting nanotechnology applications or platforms, or any assistance in licensing or acquiring technology and associated intellectual property rights, please contact Kevin Hanson at Stratagem IPM Ltd by email at firstname.lastname@example.org or phone on 01223 550740.
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Follow the links to the other articles published in the IN-FOCUS: Nanotechnology series:
– Top 10 Nanotechnology Innovations (IN-PART)
– The Difficult Promises of Graphene (Nokia Bell Labs)
– Nanotechnology & IP: Trends and Best Practices (Stratagem IPM)
– How Big Data & Machine Learning are Changing Materials Discovery (LLNL)
Header Image: EPSRC IRC in Early Warning Sensing Systems for Infectious Diseases / UCL Mathematics and Physical Sciences (CC BY 2.0)
Figure 1: Copyright, Kevin Hanson / Strategem IPM
Figure 2: Oregon State University (CC BY-SA 2.0)
Banner Image: Scott Webb / Unslpash (CCO)
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