Journal of Nanoparticle Research 4: 373–374, 2002.© 2002 Kluwer Academic Publishers. Printed in the Netherlands.

Technology and applications

Key considerations in protecting your intellectual property in nanotechnology

Stephen B. MaebiusNanotechnology Practice Group, Foley & Lardner, 3000 K Street, N.W., Washington, DC 20007, USA(Tel.: 202-672-5569; Fax: 202-672-5399; E-mail: smaebius@foleylaw.com, http://www.foleylardner.com)

Received 21 May 2002; accepted in revised form 6 June 2002

Although commercialization of nanotechnology is justbeginning, many areas of nanotechnology have alreadyseen large numbers of U.S. patents filed and issued asillustrated in the following charts.

(Figures provided by Robert Hansen, Foley and Lardner).

The increasing numbers of issued patents in this fieldmeans that those seeking to commercialize productsmust look out for the patents of others. In addition,

patents in this area may be broad in scope if there is noknown previous work that would give the Patent Officea basis for limiting the scope of the claims. Beforelaunching a product, it is important to understandthe patent landscape in your sector of nanotechnology.Patent counsel can assist by conducting a search ofissued patents to analyze potential barriers to entry orto suggest ways to avoid those potential patent barriers.

Nanotechnology brings together many disciplinesof science. Therefore, filing a patent application relat-ing to an invention in nanotechnology requires care-ful consideration of the potential end-uses so that theyare adequately covered by the patent, an exercise thatmay draw upon expertise in several different fields. Forexample, an invention in quantum dots may have appli-cations in both semiconductors and tagging of biologi-cal materials. Engaging patent counsel with a thoroughunderstanding of the technology can improve the valueof your patents.

Taking steps to protect your intellectual property iscritical for successful transfer and commercializationof inventions in nanoscale science and engineering.Many investors will not invest without adequate intel-lectual property, and many deals turn on the qualityof your intellectual property. It is important to consultwith qualified intellectual property counsel at the earli-est possible stage to ensure that adequate measures arein place to protect your intellectual property. There aremany traps for the unwary.

A list of key considerations for protecting your intel-lectual property in nanotechnology is given below. Thelist is by no means intended to substitute for qualifiedintellectual property counsel, and it is not intended toconstitute legal advice, but it may help you to avoidcertain mistakes that could reduce the value of yourintellectual property.

• Do not publish or publicly present your inventionuntil you have filed a patent application and consultedwith a patent attorney.

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• Do not offer to sell your invention until you havefiled a patent application and consulted with a patentattorney.

• Do not discuss your technology with potentialinvestors until you have entered into a non-disclosureagreement with them, consulted with a patentattorney and also preferably filed a patent application.

• In consultation with your patent attorney, conducta freedom to operate search of third party patentsbefore launching a product or investing large sums ofmoney to develop a product. Just because you havea patent covering your product does not give youa right to practice under other parties’ patents – apatent is only a right to exclude others, not a right topractice.

• Maintain detailed lab notebooks with each pagedated, signed by the person who performed the work,and countersigned by a witness who can understandyour technology to document your discoveries.

• Consider the use of invention disclosure forms (inaddition to maintaining lab notebooks) to facilitatepreparation of patent applications.

• Remember that grant proposals can create priorart against your own later-filed patent applications,so language to be included in grant proposalsshould be reviewed by a patent attorney before it issubmitted.

• Be sure your intellectual property counsel has a tech-nical background sufficiently relevant to understandyour invention and the full range of applications ofthe technology.

• Take steps to maintain confidentiality of yourresearch and prevent access by non-employeevisitors.

• New employees should sign agreements clearly stat-ing that their inventions will be owned by the com-pany if that is the intended result of the employmentrelationship and that they agree to be bound yourcompany’s confidentiality policies and procedures.

• Be sure to screen new employees to ensure thatthey have not misappropriated trade secrets that areowned by other parties such as previous employers.

• Before collaborating with other parties to jointlydevelop technology or to contract for the develop-ment of new technology by another party, you shouldconsult with a patent attorney to ensure that agree-ments are in place that properly define ownership ofany resulting intellectual property.

• Before licensing in or licensing out any intellectualproperty, you should consult with a patent attorney toconduct a due diligence review to ascertain the valueof the intellectual property. Failure to be informedof weaknesses or strengths in intellectual propertycan negatively impact your negotiations.