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The Leading Voice of the Nanotech Revolution
NanoBusiness Alliance Publication

Dear Friends:

We have many new developments to discuss this issue, particularly on the policy front.

First, the NIST is threatened with a drastic reduction in funding, putting the ATP program on life support. Needless to say, this is of grave concern to the NanoBusiness Community. The program has been instrumental for several nanotech companies, including Zyvex and Molecular Imprints. The ATP is a critical source of funding to encourage new partnerships to form between start-ups and domestic incumbents. While the program is sometimes framed as corporate welfare, its elimination would force more start-ups to seek overseas partnerships to "scale up" their innovations, and we will lose many of the potential jobs and a significant portion of the economic benefit we expect from Federal science and technology research investments. This example highlights the increasing importance of our public policy efforts. We are finalizing plans now for the NanoBusiness Alliance Public Policy Tour (February 8th and 9th in Washington, DC - -- see the NanoBusiness Events section below). Members are invited to an agenda setting conference call this Thursday, November 18th at noon EST. Please contact me for further details.

Second, the NanoBusiness Alliance helped to launch the International Council on Nanotechnology (ICON) a few weeks ago at Rice University. Why are we involved in launching a new non-profit nanotechnology group, you ask? Simply stated, we did it because it was the right thing to do. We believe that nanotechnologies can and will be harnessed to dramatically improve the human condition, and that the risks associated with these technologies can be mitigated when properly understood and communicated. But, right now, there is a high level of confusion (which creates uncertainty) over the environment impact or the health and safety of nanomaterials in particular that does not serve anyone well, and ICON, if it is effective, can materially reduce that confusion and uncertainty.

I have to say that I was somewhat disappointed by the press coverage, and I think it unnecessarily impeded progress. The newspaper stories played the old storyline of industry influence and lack of environmental involvement. But, the coverage was off the mark. First, several NGO representatives, including Pat Mooney of ETC Group and Scott Walsh of Environmental Defense Fund, did attend (although the news stories said they declined their invitations) and had positive things to say in interviews with Science and Nature following the meeting. Second, the "industry influence" arising from its funding of ICON should be lauded instead of criticized. ICON did not limit its funding to industry sponsors, but only forward thinking members of industry had the financial wherewithal to step up to make the launch of ICON possible. In the future, we would expect the funding to diversify, but the "seed capital" if you will, had to come from somewhere.

In spite of the initial media coverage, the launch of ICON was a positive first step toward reducing the uncertainty and confusion around the environmental, health, and safety implications of nanotechnology. Although it was clear that although the stakeholders may have very different positions on specific issues, it was also clear that we all had the same interest - that nanotechnology be safely brought to bear to rapidly address real human needs.

Because of that, I look forward to serving on the Steering Committee of ICON. It is our hope that ICON will provide a valuable forum for ensuring that our membership's issues, which we will gather and disseminate through the Alliance's Environmental Health and Safety Task Force, are being investigated and addressed.

Thirdly and finally, we are in the process of building out additional member services at the Alliance. One of the services will be to identify quality information and market research and negotiate preferred terms for our members to create a strong value proposition for the Alliance and its membership. We have struck the first of these deals with the folks at Lux Research.

We have negotiated a 10% discount on The Nanotech Report 2004 from Lux Research for Alliance members. TNR 2004 is unique comprehensive in its coverage of the emerging nanotechnology landscape, across the many vertical industries that will be impacted by the continued development and commercialization of nanotech innovations. It contains profiles of more than 1,000 companies and academic institutions, new investment frameworks and strategies, patent licensing opportunities and trends, interviews with Nobel laureates and industry experts, and a technical primer.

Specifically, TNR 2004:
* Forecasts the impact of nanotechnology on the Chemical, Textile, Computing, Transportation, Energy, Healthcare, and Homeland Security industries
* Provides a nanotechnology roadmap
* Identifies the potential winners and losers in the emerging nanotechnology industry
* Explores the research initiatives at leading government laboratories
* Presents compelling interviews of academic researchers at the forefront of Nanotechnology
* Ranks the most influential people in the field
* Highlights venture capital and worldwide government funding trends
* Identifies the top private nanotechnology companies most likely to IPO.

We expect to expand relationships like these to deliver more direct value to all of you.  

Sean Murdock
Executive Director
NanoBusiness Alliance


During the "lame duck" session of Congress starting this week, word on the street is that the National Institute of Standards and Technology (NIST) is facing severe budget cuts for FY '05 - with the ATP program slated for elimination. The Lame Duck session is only last through November 19, 2004, so we need to act quickly.

These cuts could occur as part of adoption of an "Omnibus" budget resolution which may come up or as part of a "Continuing Resolution" during the same Lame Duck session. Whatever the process, the result could be the same: NIST Programs could once again be devastated and stripped to the bones.

It's no surprise that Advanced Technology Program (ATP) may once again be slated for extinction (just once we'd all like to see reforms happen early to remove criticism of this valuable program so it doesn't get down to this every year). Basically the program may be gutted to $60 million so as to be able to finish out current grants but not be able to fund new ones. It is anticipated that the ATP would then be eliminated entirely in FY '06 budget if this goes through.

Because the ATP Budget is linked in part with other NIST Programs, a domino effect will be triggered and likely cause additional cuts and perhaps even lay-offs.

To make your voice and the voice of the nanotechnology community heard, please contact your Senator and Representative as well as the following appropriators in the House and Senate who will make the ultimate decision on NIST funding. Call: 202-224 3121 -- or go to for email ---and ask for the following office holders:

Senate Committee on Appropriations Subcommittee on Commerce, Justice, State and Judiciary
Sen. Judd Gregg (R-NH)
Sen. Fritz Hollings (D-SC)

Senate Committee on Appropriations
Sen. Ted Stevens (R-AK), Chairman
Sen. Robert C. Byrd (D-WV)

House Subcommittee on Commerce, Justice, State, Judiciary and Related Agencies
Rep. Frank Wolf (R-VA)
Rep. Jose Serrano (D-NY)

House Committee on Appropriations
Rep. C. W. "Bill" Young (R-FL)
Rep. David R. Obey (D-WI)

Please ask all Congressional Members and staffers you talk to that preserving NIST funding and the ATP program is important to the future of American leadership in technology.

It means a growing economy and it ultimately means more jobs.

Thanks again for all your help!

The NanoBusiness Alliance

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FEI Company

Note: Mr. Sabety's footnotes appear at the end of this page.

Can NNI Funding Agents Set An IP Licensing Policy To Avoid A Nano-patent Thicket?
Ted Sabety

Nanotechnology has been dubbed "the next industrial revolution."[I] Some commentators believe nanotechnology will propel the world into a new era of engineering advancement that will rival the information technology industry in the last half century [II] - with a concomitant growth rate faster than any other industry in history.[III] Though nanotechnology is still in its infant stage, massive public funding has begun pouring into nanotechnology-related research and development, and billions of dollars have been pledged toward further development in the coming years.[IV] Yet, several commentators have raised concerns that the extraordinary pace of patenting of nanotechnology[V] will result in a patent deadlock[VI] that will stifle innovation, dis-incentivize investment and impede economic growth.[VII]

Further, there are those who have raised concern that the Bayh-Dole Act, which privatizes publicly funded patented research[VIII], is encouraging the growth of the thicket because these publicly funded patents are being collected into portfolios held by private, third party entities. Funding agencies should consider a licensing policy for publicly funded patents. Thus, the question is whether the Bayh-Dole Act provides sufficient authority for a publicly accountable funding agency to apply licensing policy and what that policy should be.

Foremost is to consider the goals of public financing of innovation. Presumably, the point of the NNI is to maintain the economic competitiveness of the United States by encouraging small or new businesses to compete globally using advanced technology developed through publicly funded research. If the aim is to induce rapid economic growth, imitating the I.P. policy context under which the information technology industry was launched may be appropriate.

But the analogy between nanotechnology in its current infant state and the information technology revolution is inapt: the latter occupied an entirely different intellectual property, anti-trust and funding policy context than that of nanotechnology today. In the 1950's, AT&T;, where the transistor was invented, was subject to an anti-trust consent decree that required that they license their patent portfolio non-exclusively to all who agreed to cross-license their patents into AT&T; for telephone service uses. This is how Sony ended up with a transistor patent license in the 1950's. Similarly, IBM was subject to a similar decree in the 1960's regarding their patent portfolio. At the same time, computer programs and programming methods were not considered subject to either patent or copyright protection. This was how Amdahl and Control Data built IBM System 360 compatible mainframes. In this manner, the early years of the information technology industry was one of widespread, non-exclusive licensing or a lack of proprietary rights altogether.

Once the computer industry was established by the 1970's, stronger I.P. rights in information technology arose-just when the technology became widely accessible to entrepreneurs through the introduction of microprocessors. By the 1980's, computer software was considered subject to copyright and patent protection. This time-variant aspect of I.P. policy that the information technology industry enjoyed is essential to consider: the early, foundational innovations were available non-exclusively and proprietary rights were applied later to follow-on innovations. The F.T.C.'s recent recommendation that the patent statute lower standards of proof to prove invalidity or to provide post-issuance re-examination does not produce the same I.P. policy context that the early information technology industry enjoyed. Nobody has argued either that the transistor or the time-sharing operating system were obvious inventions. In addition, the F.T.C. appears to be aiming toward a static point, rather than creating a dynamic policy that, for a given technology, shifts as the technology matures.[IX]

Licensing policies for the large amount of foundational I.P. likely to be produced by public funding of nanotechnology research should be developed in order to mitigate the fears of a patent thicket. One way to imitate the I.P. policy context of early information technology is for the federal funding agencies to apply their discretion and statutory power provided under the Bayh-Dole Act to encourage publicly funded institutions that patent foundational nanotechnology to more widely license it. In other words, include provisions in funding agreements that make publicly funded foundational patents in nanotechnology widely licensed while preserving exclusionary rights for later, follow-on applications. To the extent the funding agency authority are not considered sufficiently clear in the statute, then the Act should be amended.

The Bayh-Dole Act provides that small business, universities and non-profit organizations can retain title to patents resulting from federally sponsored research.[X] The stated policy of the Bayh-Dole Act is to "promote utilization of inventions … in a manner to promote free competition and enterprise without unduly encumbering future research and discovery … and to protect the public against nonuse or unreasonable use of the inventions…."[XI] The Bayh-Dole Act provides two mechanisms to permit a public funding agency to establish the disposition of patent rights resulting from publicly funded research. Under 35 U.S.C. §202(a)(ii), the "exceptional circumstances" test, a funding agency can establish a "restriction" on title to a publicly funded patent. Under 35 U.S.C. §203, "march-in rights" may be granted to third parties in cases where an owner of a publicly funded patented innovation ". . . has not taken or is not expected to take within a reasonable time, effective steps to achieve practical application . . ." of the patented innovation. This latter provision requires an administrative adjudication to reach the determination that "effective steps to achieve practical application" has not occurred. The latter approach is slow and creates transaction costs for parties that seek to exploit it. Because a third party seeking march-in rights has to wait and then pay for the costs of engaging in the adjudication, which may be unsuccessful, it is not at all clear that march-in rights are a sufficient means to ensure widespread licensing of foundational nano-technology I.P. funded by the public. In addition, it has been reported that the NIH, for example, has never granted a march-in request.[XII] Furthermore, the "commercialization" test might be met even if the exclusive licensee of a patent is charging monopoly rent for its downstream use.

The only way that the Bayh-Dole Act can provide certainty at the outset that a particular publicly funded patent will be licensed widely is through the application of the "exceptional circumstances" test. This would be where a funding agency determines that the product of its funded research may result in patented inventions sufficiently foundational that exclusivity is not required in order to attract capital to commercialize the invention. The statute then authorizes the funding agency to insert a restriction on title to the patent in the funding agreement. The legislative history surrounding this test is slim, but it indicates that it includes cases where "patent incentives will not be required to bring the product to market."[XIV] The legal mechanism is "restriction on title," which can be an agreement between the research organization and the funding agency that the patents resulting from the publicly funded research be licensed non-exclusively.

The point is that this decision is selective: not all publicly funded patents should be non-exclusively licensed, but those research results-- like recombinant D.N.A. techniques or the transistor--that clearly do not require proprietary control over them in order to attract investment and commercialization should be. Non-exclusive licensing does not necessarily result in less money for research organizations: universities in the past have made considerable sums from non-exclusive licensing practices.[XV] Evidence that such policies worked include the famous Boyer-Cohen patent over recombinant DNA, which ushered in the biotechnology revolution, which was widely licensed non-exclusively by its owner, Stanford University, in accordance with the same philosophy.[XVI]

Traditionally, universities made the decision over how to license their publicly funded patents. Yet Boyer attempted to convince Stanford to provide his company, Genentech, with an exclusive license. Stanford refused. But now there are concerns in the nanotechnology field that universities are now more likely to license their publicly funded patents exclusively to private third parties that then further decide whether to license non-exclusively and for how much. This raises an agency problem: when the university or the third party is determining licensing policy, the result may not be in the best economic interests of the U.S. taxpayer, who funded the research. That is, economic growth may not be as important to the third party as monopoly rent. The private decision maker also faces a moral hazard: even where the private third party promises non-exclusive licensing in the future in order to maintain a vibrant nanotechnology industry, acting on that statement may be in conflict with their fiduciary duty to their shareholders. This theoretical point is made more real when one considers the increase in securities law litigation in both the private and public sector. In conclusion, it is not likely that private parties will follow licensing policies for publicly funded patents that are in the best interests of the public unless that policy meets the objectives of their private interest.

The Bayh-Dole Act is effective when the publicly funded patent is being used to attract capital and provide competitive advantage to a private organization that buys equipment, supplies and hires people to make a product or provide a service under the patent. But it is superfluous when the patent is so foundational that it would attract investment to commercialize even without the exclusionary patent rights attached. The example of the information technology industry is a case in point: it is the later follow-on innovations that were built on widely licensed underlying foundational technology that generated wealth through proprietary rights. It is important that the Bayh-Dole Act be applied so that the foundational nanotechnology that is being funded by the U.S. taxpayer is available to those U.S. taxpayers whose entrepreneurial drive seeks to build new innovations upon them, while at the same time providing proprietary rights over those publicly funded innovations that need exclusionary patent rights in order to be commercialized. The selective choice is critical, which means the agency problem raised by exclusively licensing publicly funded patents into the private sector needs to be alleviated. The conclusion is that nanotechnology funding agencies should liberally construe "exceptional circumstances" to include foundational patents in nanotechnology that are likely to be widely adopted notwithstanding a lack of exclusivity-- especially where exclusive license into industry would produce a contrary result to the stated purpose of the Bayh-Dole Act. In the absence of statutory authority, it may be appropriate to amend the Bayh-Dole Act to provide for a mechanism for achieving a sound licensing policy for foundational nanotechnology.

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Grazing the Nanograss: Adaptable substance may cool computers and put a zoom lens in your cell phone -- Computerworld
IMEC claims silicide gate could enable 45-nm process -- EETimes
Intel Says It Can Make Smaller Chips For 15 Years Or More -- Wall Street Journal online, Dow Jones Newswire
Intel sketches out nanotechnology road map -- NY, CNet,ZDnet,
Memories may mark early beachhead for nanotech -- EETimes
Power on a Chip -- MIT Technology Review
Six computer scientists take a look into the future. What's in store? Think speed -- Information Week
The Skinny on Nanotubes -- Business Week Online

TI, SMIC sign deal to develop 90-nm technology by Q1 '05 -- EETimes

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At HealthSpace, it's a nano, nano world -- Cleveland.Com
Cooking Tumors: Nanospectra Bioscience's gold-plated particles heat and kill tumors. -- MIT Technology Review

Doctors Use Nanotechnology to Improve Health Care -- New York Times

Drug-loaded contact lenses to treat eye diseases -- News Medical Net

First human trial of bioartificial kidney shows promise for acute renal failure -- U-M researchers report, University of Michigan

Livermore Scientists Join DOE Consortium In Partnering With Private Company To Develop Artificial Retina -- Science Daily

National Cancer Institute symposium exploring the application of nanotechnology in the diagnosis, treatment and prevention of cancer -- Azon

Report puts pharma industry under further pressure -- Inpharma
Research Fills Dental Need -- Nanotech-Now
Singapore scientists invent drug-dispensing contact lens -- Channel News Asia

Systems Biology and New Technologies Enable Predictive and Preventative Medicine -- Science magazine

The Vast Potential of Very Small Things -- Business Week online

Tiny science expects to reap big advances Putting heads together on a molecular level -- Cleveland.Com

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Defense/Homeland Security
Fresh Air -- MIT Technology Review
Nanosensors inside astronauts' cells could warn of health impacts from space radiation -- Physorg
Poison Protector: Sailor's portable nerve gas sensor -- ScienCentral

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Nanotechnology May Change Energy Industry -- Associated Press, NY Times

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Awards & Notables
Univ. Of Oklahoma professor gets 2004 chemistry award Journal Record -- Oklahoma City/ Small Times

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Grants & Funding
Board approves 3 construction plans for UT -- Daily Texan
National Science Foundation Funds SRI International to Help High School Students Learn Nanoscience -- Business Wire
New NSF center to study fundamentals of nanostructures, build and test nanodevices -- University of California, Berkeley,
Prof. uses lasers to study brain; Prof. Rosenthal receives $1.4 million grant -- The Vanderbilt Hustler (Vanderbilt Univ.)
UMaine opens state-of-the-art lab -- MainToday.Com

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Revenue from Nanotechnology-Enabled Products to Equal IT and Telecom by 2014, Exceed Biotech by 10 Times -- Yahoo News
3DM Inc. Secures $1.7 Million Financing for Clinical Development of Puramatrix Hydrogels -- Yahoo News
Nanotechnology-Based Products Have Impact -- Associated Press/San Jose Mercury News
Q3 Report: Funding up with $267.7 Million in Nano, Micro and MEMS -- SmallTimes

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Getting down and dirty; Clothes hold up to a little ketchup here, a bit of wine there -- Chicago Tribune
A new kind of working clothes -- Orlando Sentinel
Attack of the Nanobots! -- Motley Fool
Bush and a Butterfly -- Wall Street Journal
Nobel winner: Science 'revolution' coming -- NJ.Com
Partnering Gives Smaller Nano Firms Access to More Markets -- Small Times
Personal Relations Break Through Cultural Barriers -- Small Times
Serial entrepreneurs: True tales from industry veterans -- Small Times
Smarter Products with Nanotechnology -- Financial Times
Team Based approach Integrates Technologies into Products -- Small Times
The Other Exponentials: Moore's Law isn't alone. Many technologies now improve so quickly it boggles the mind. -- MIT Technology Review
Trumpeter Turns 'Nanotech' into Sounds of Science -- Small Times
Twosomes Become Troublesome if One Side Goes Under -- SmallTimes
View from a Startup: Partners are Necessary -- Small Times
Women Techies Make Workplace Gains -- Small Times

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India, US Make 'Substantial Progress' In High-Tech Talks -- Wall Street Journal online, Dow Jones Newswires
Tiny Ideas Coming of Age -- NY Times

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Novel nanomaterial strips contaminants from waste streams, Environmental Science and Technology Online -- a publication of the American Chemical Society
SUSTAINABLE SPECIALTIES: Performance chemical producers put renewable resources to the test as products of the future -- C&E News, American Chemical Society
Thoughts on the future of nanotechnology -- Soft Machines

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Public Perception
CBEN Launches Partnership for Sustainable Nanotechnology -- Nanotech-Now
'Don't be afraid to brand nano,' says Wilson exec -- Small Times
Facing the Ethical Challenges of Nanotechnology -- The Research Council
Green groups baulk at joining nanotechnology talks -- NATURE magazine
Nano World: Dealing With Too Much Hype -- Space Dailey
Nanotech Group's Invitations Declined -- Washington Post
SCIENCE POLICY: Nanotech Forum Aims to Head Off Replay of Past Blunders -- SCIENCE magazine
Small science generates a big fuss -- Times Online

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Regional/Economic Development
Blow for tech as iMedd bails -- MSNBC
Nanofab and Research Institute Help Edmonton Gain Prominence -- Small Times
Nanotech study spans borders -- Albany (NY) Times Union

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Gov't approves easier investment aid criteria -- Globe Online
UK Gives Out $26 Million for Industry Development -- SmallTimes

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Biochip spots single viruses -- Technology Research News
Coated nanotubes record light -- TRN
DNA in nanotubes sorts molecules -- TRN
DNA machines take a walk -- TRN
Molecules form nano containers -- Technology Research News
Molecules Positioned on Silicon -- MIT Technology Review
Nanomechanical memories take off -- Nanotechweb
Nanotubes lengthen to centimeters -- TRN
Researchers refine nano self-assembly -- Electronics Weekly
Researchers watch water inside nanotubes -- Nanotechweb
Silicon nanocrystals made easy -- Physics Web
Single field shapes quantum bits -- TRN
Surfactant boosts dip-pen nanolithography -- Nanotech Web
UC Irvine scientists develop world’s longest electrically conducting nanotubes -- UC-Irvine press release
UCLA Chemists Report New Nano Phenomenon: Welding in Response to an Ordinary Camera Flash -- UCLA News Release
UCSD chemists use tiny ’chaperones’ to direct molecules and nanoparticles in drop of liquid -- Innovations Report
VCU Scientists Studying a "Nano-bullet" for non-invasive Treatment of Cancer Tumors -- Virginia Commonwealth Univ. press release

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NanoBusiness Alliance Public Policy Tour
February 8th and 9th
Washington, DC

Help Us Make Nano’s Voice Heard in Washington, DC at our signature event, the NanoBusiness Alliance Public Policy Tour. 

Mark your calendars and join us in Washington, DC, on February 8-9, 2005.  Last year’s Public Policy Tour helped secure $3.7 billion for nanotechnology research and development.  This year's upcoming tour is even more important -- giving us an opportunity to educate key decision makers and persuade them to follow through on the federal government’s commitment to nanotech and advanced technology R&D.  

Join dozens of industry colleagues from across the country as we meet with members of Congress, Administration officials, and policy-oriented reporters.  Participants will gain knowledge, experience and relationships that will help your business grow and thrive in the future. 

The NanoBusiness Alliance will assist by scheduling the meetings, helping to craft policy messages, briefing you on the best way to communicate with policy makers and reporters, and helping you navigate the largest funding source for nanotech today.   

To RSVP, or for more information, contact Sean Murdock at 312.593.0293 or

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About the NanoBusiness Alliance

The NanoBusiness Alliance's is the fasting growing industry group in the technology field. Our mission is to create a collective voice for the emerging small tech industry and develop a range of initiatives to support and strengthen the nanotechnology business community. These initiatives include: Research and Education; Public Policy; Public Relations; International Cooperation Activities, Trade Missions, and Events; Industry Support and Development Initiatives; Regional Hub Initiative; and others.

The Alliance was founded by F. Mark Modzelewski, Nathan Tinker and Josh Wolfe of Lux Capital in October 2001. The Advisory Board of the Alliance is headed by the leaders of the nanotechnology community and is headed by former House Speaker Newt Gingrich, Herb Goronkin of Motorola fame and leading venture capitalists Steve Jurvetson of Draper Fisher Jurvetson. With over 250 members strong, the Alliance is headquartered in New York City and has offices in Washington DC and Denver, CO. The Alliance has Hubs and affiliate groups underway in Texas, Chicago, Colorado, San Francisco/Silicon Valley, Michigan, New York State, Washington DC. Metro, the EU, Canada and Israel.

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Ted Sabety is the founder of Sabety +associates, PLLC, a technology law firm at One Penn Plaza, New York, NY 10119, 212 481 8686,  He is a graduate of Columbia Law School, Yale University and at one time a semiconductor engineer for Hewlett-Packard.  
[I]National Science and Technology Council Committee on Technology Subcommittee on Nanoscale Science, Engineering, and Technology, National Nanotechnology Initiative: Research and Development Supporting the Next Industrial Revolution(2003), available at   [hereinafter National Science and Technology Council].
[II]See Raj Bawa, Nanotechnology Patenting in the U.S., 1 Nanotechnology L. & Bus. 31, 36-38 (2004).
[III]National Science Foundation, quoted inQ. Todd Dickinson, Forward to the First Volume of Nanotechnology L. & Bus., 1 Nanotechnology L. & Bus. 5, 6 (2004).
[IV]See National Nanotechnology Initiative, N.N.I. Funding, at (2004) [hereinafter N.N.I. Funding].
[V]See Figure 3, Ted Sabety, Nanotechnology Innovation and the Patent Thicket: Which IP Policies Promote Growth? Nanotechnology Law & Business, Volume 1, Issue 3, September 2004;
[VI]See Carl Shapiro, Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard-Setting, inInnovation Policy and the Economy 6-8 (Adam Jaffe et al. eds., 2001), available at . Carl Shapiro defines “patent thicket” as “an overlapping set of patent rights requiring that those seeking to commercialize new technology obtain licenses from multiple patentees” (id. in Abstract).
[VII]See, e.g., Vivek Koppikar, Stephen B. Maebius, and J. Steven Rutt, Current Trends in Nanotech Patents: A view from Inside the Patent OfficeNanotechnology L. & Bus. 24, 27 (2004); Steve Jurvetson, Transcending Moore’s Law with Molecular Electronics and Nanotechnology, 1 Nanotechnology L. & Bus. 70, 77-80 (2004); Antonio Regaldo, Nanotechnology Patents Surge As Companies Vie to Stake Claim, Wall St. J., June 18, 2004, at A1; David Fornan, IP Storm Clouds Build on Horizon, SmallTimes 20, 21-22 (2004).
[VIII]35 U.S.C. §§200-212 (1980). The Bayh-Dole Act permits recipients of federal research funding to retain ownership of patents in the research results. Infra, Part II(B).
[IX] Ted Sabety, Nanotechnology Innovation and the Patent Thicket: Which IP Policies Promote Growth?,
Nanotechnology Law & Business, Volume 1, Issue 3, September 2004; to be published in the Albany Law School Journal of Science and Technology, 15.2 Alb. L.J. Sci. & Tech --- (2005).
[X] Bayh-Dole Act of 1980; Pub. L. No. 96-517; 94 Stat. 3015 (codified as amended at 35 U.S.C. §§ 200-11 (1994)).  "Each non profit organization or small business may … elect to retain title to any subject invention, provided… that a funding agreement may provide otherwise … (ii) in exceptional circumstances when it is determined by the agency that restriction or elimination of the right to retain title to any subject invention will better promote the policy and objectives of this chapter …" 35 U.S.C. s. 202(a).
[XI] 35 U.S.C. s. 200.
[XII] "Each non profit organization or small business may … elect to retain title to any subject invention, provided… that a funding agreement may provide otherwise … (ii) in exceptional circumstances when it is determined by the agency that restriction or elimination of the right to retain title to any subject invention will better promote the policy and objectives of this chapter …" 35 U.S.C. s. 202(a).
[XIII] IP Law & Business, November 2004, pg. 12.
[XIV]No case has been found construing what constitutes “exceptional circumstances.”  See S. Rep. No. 96-480, at 32  (1980). The Senate Report says that the exception will be used “sparingly.”  The report then considers a case where “patent incentives will not be required to bring the product to market.”
[XV]Non-exclusive licensing can be highly remunerative. The Boyer-Cohen patent owned by Stanford University and the MPEG-2 patent held by Columbia University are examples of highly remunerative non-exclusive licensing programs. Columbia earned $98 Million from its patent incorporated into the MPEG-2 standard used by the DVD Forum. See Chronicle of Higher Education, Dec. 10, 1999., at
[XVI]U.S. Patent No. 4,237,224 (issued Dec. 2, 1980). The invention was supported by generous grants of the National Institute of Health, the National Science Foundation, and the American Cancer Society. The patent was freely licensed to anyone who wanted it for an initial fee of $10,000 and a minimum annual fee of $10,000 (plus additional royalties from successful products) (Margaret Young, The Legacy of Cohen-Boyer, Signals Magazine (Jun. 12, 1998). Boyer and Swanson went on to form Genentech, Inc. (see generally Genetech, Inc., Corporate Overview: History, at (2004)). “[T]he patent, which expired in 1997, is noted to be one of the most significant university licenses in terms of revenues generated and commercial impact. . . In sum, 406 firms licensed the right to use the recombinant DNA patents. . .resulting in 125 commercial products” (Maryann P. Feldman, Commercializing Cohen-Boyer: Recombinant DNA as General Purpose Technology, in  abstract (June 2004) (unpublished manuscript for the DRUID Summer Conference 2004 on Industrial Dynamics, Innovation and Development)). See also Hopkins v. CellPro: An Illustration That Patenting and Exclusive Licensing of Fundamental Science is Not Always in the Public Interest, 13 Harv. J.L. & Tech. 375, 382-283 (2000).

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