Nanotechnology Intellectual Property Rights

"We need to seamlessly integrate IPR in the standard graduate/post graduate courses in science, technology, commerce, creative arts, etc., without over burdening the students with law"—Dr Prabuddha Ganguli, CEO, VISION-IPRNanotechnology Intellectual Property Rights: Research, Design, and Commercialization offers an overview of the dynamics of development and commercialization in nanotech, where strategic integration of IP, R&D, and commercialization has become imperative. It demystifies issues of intellectual property rights (IPR) associated with research, design, technology transfer, and commercialization of innovations in technology-led areas such as nanotech.
Gives all stakeholders vital information to instill confidence by helping them better understand their individual roles in the IPR process
Designed for a diverse readership that may not have background knowledge of the legal nuances of IPR, this book clearly articulates techno-legal aspects of nano-related innovations to aid their effective integration into businesses. This resource stands apart by using numerous case studies and pictorial illustrations, addressing aspects ranging from ideation to commercialization of IP-enabled nanotechnology. It illustrates the evolving patent landscape in nanotechnology, explores the international patent classification system, and details patenting procedures in a range of jurisdictions, including search for nanotechnology prior art and creation of search strategies.

The authors discuss patent-led nanotechnology businesses, presenting a wide range of case studies that address construction of valuable patent portfolios, growth of start-ups, and consolidation of IP-led nanobusinesses through mergers, acquisitions, joint ventures, strategic investments, etc. They also cover patent litigations in nanotechnologies and the significance of strategically crafting agreements related to IP transactions. In addition, they address compliance with contractual obligations, the importance of well-drafted patent specifications, and sensitive aspects of conducting techno-legal due diligence prior to the development and marketing of products. Also covered are vulnerabilities in challenging/defending the validity of patents and negotiating settlements.

Integrating use of the IPRinternalise® model for capacity building in human and infrastructural resources, the authors assess the future of IP landscaping in nanotechnology. Here, they focus on patentability, public perception of risks to health and ecosystems, institutionalized management of intellectual property rights, and the steps that will be necessary to meet these and other such challenges on the way to realizing profits in nanotech.

Prabuddha Ganguli, Ph.D, is the CEO of VISION-IPR offering services in management of intellectual property rights, information security and knowledge management including designing of innovation processes, strategizing technology transfers, and conducting IP due diligence for joint ventures, mergers, and acquisitions. He is a qualified patent agent in India. He is an Honorary Scientific Consultant for Innovation and IPR matters to the Office of the Principal Scientific Adviser, Government of India; a member of the advisory board of the International Intellectual Property Institute, Washington; and a member of the advisory board of the Institute of Intellectual Property Studies, Mumbai. He is a member of the international editorial board of the IPR journal World Patent Information. As an international consultant to the World Intellectual Property Organization (WIPO), Geneva, Dr. Ganguli is actively involved in IPR Capacity-building programs, and formulation and implementation of national IPR policies in several developing and least developed countries.

Siddharth Jabade, Ph.D, possesses a unique blend of technical and patent expertise. He is presently professor of mechanical engineering at the Vishwakarma Institute of Technology, Pune, India (VI, Pune). He completed his bachelor’s and master’s degrees in engineering at the University of Pune and obtained his Ph.D from the Indian Institute of Technology, Bombay (IIT Bombay). He has been a senior associate at VISION-IPR, a leading intellectual property management firm in India. He is the author of several scientific publications and inventor in patents related to inventions in heat transfer. He is also the coordinator, Intellectual Property Rights Facilitation Centre at VI, Pune. He is a qualified patent agent in India and is involved in drafting and prosecuting patent applications.

How Big Is Small?
Evolving Patents Landscape in Nanotechnology
Trends in the United States
References

Patents: A Background
Patentable Subject Matter
Novelty (New)
Inventive Step (Nonobviousness)
Capable (Susceptible) of Industrial Application (Utility)
Anatomy of a Patent
Patenting Systems: An Overview
The PCT Process

Looking for Nanotechnology Prior Art
International Patent Classification System
Searching Other Sources for Nanotechnology Information
Creating Search Strategies
Illustrative Example

Patent-Led Nanotechnology Business: Perspectives
Integration of a Fragmented Patent Landscape
Case Study 1: NanoInk, Inc.
Case Study 2: Nanosphere, Inc.
Case Study 3: NVE Corporation
Case Study 4: Vista Therapeutics, Inc.
Case Study 5: Applied Nanotech Holdings, Inc.
Case Study 6: mPhase Technologies, Inc.
Case Study 7: Bilcare Research, Pune, India
Case Study 8: HyCa Technologies Pvt Ltd., Mumbai, India
Case Study 9: Consolidation Through Sequential Merger of Carbon Nanotechnologies, Inc. (CNI), Nanopolaris, Unidym, and Nanoconduction, and Acquisition of Unidym by Wisepower Co. Ltd.
Case Study 10: Innovalight and DuPont Merger
Invitrogen (Presently Life Technologies Corporation)
Strategic Investing and the Role of Venture Capital
Bonds

Patent Litigations in Nanotechnologies
Nanosys, Inc. v. Nanoco Technologies and Sigma-Aldrich Corporation
DuPont Air Products NanoMaterials LLC v. Cabot Microelectronics Corporation
Nano Proprietary, Inc. (NPI) v. Cannon
Elan Pharmaceuticals International Ltd. v. Abraxis BioScience, Inc.
Oxonica Energy Ltd. v. Neuftec Ltd.
DSM v. 3D Systems
Veeco Instruments v. Asylum Research
Modumetal, Inc. v. Integran, Inc.
MTS Systems Corp. v. Hysitron, Inc.
EV Group v. 3M
Tekmira v. Alnylam
Other Nano Patents Litigation Snippets

Interfacing with the Nanofuture
Uncertainties Looming over IP Portfolios
Case Study: Oxonica Ltd. (formerly Oxonica plc)
United They Stand, Divided They Fall
Lessons from the Case Studies
Nanotechnology Patentability Issues: Gray Areas
Institutional IPR Policy and Management
IPRinternalise®
Nanotechnology: Sunrise of the Day After