Margaret Hartnett - Technical Assistant, Murgitroyd & Company, European Patent and Trade Mark Attorneys, UK

Things to Consider When Licensing Nanotechnology

Recent years have seen rapid growth in nanotechnology research and development.  Similarly, the licensing of technology resulting from these activities is becoming increasingly common (e.g. the exclusive licensing agreement between NanoInk, Inc. and SII NanoTechnology Inc. (SIINT), a subsidiary of Seiko Instruments Inc., to provide nanoscale repair solutions to the photomask industry).

The licensing of Intellectual Property (IP) is a complex topic in its own right and can be very valuable for a business.  Whilst one frequently thinks of licensing solely in terms of patents, in fact many different forms of IP may be licensed including trade secrets, trade marks, existing and future developments, know how etc.  Thus, whilst the licensing of nanotechnology may primarily relate to patent licensing, it is nonetheless important to consider the possibilities of licensing the other forms of IP available.

There are parties with IP who want to license out their technology and receive a return on their investment in their research and development.  There are parties who have not progressed far with their own technology and are seeking to license in technology developed by other when available. There are parties interested in participating in a little of each.

As with any other technology, there are a number of issues to consider when licensing nanotechnology, whether in, out or both.  In particular, issues such as:

• the nature of the rights conferred by the licence;
• the territories and scope in which the rights are conferred;
• the restrictions and limitations including warranties regarding 3rd party rights, patentability, infringement, enforcement;
• improvements and what to do with them;
• the value equation for each party to the license;
• the ability to make the most of the technology available; and
• the need to ensure a win-win deal for all parties.

If the license relates to a patent it might be necessary to assess issues such as the patentability and infringement of the patent and thus it is essential to consider the scope of the patent claims.  In this regard, nanotechnology patents pose particular challenges, as the non-uniformity of language used can make it difficult to accurately construe the claims. 

A further challenge resides in the timing of licensing in or out due to the amount of time required to bring a nanotechnology product to market compared with the available lifetime of a patent.  In many cases, the complexity of nanotechnology inventions means that such inventions may take a considerable amount of time to reach the market (or achieve regulatory approval, for example with healthcare products).  If this is the case, the patent many not have long to live and thus the ability to generate substantial revenues may be inhibited.

Nanotechnology licensing is a developing environment and the changes in adoption and standardisation of the industry will continue this development.  To be at the front of the race will require careful timing and careful IP management.  To make sure you are a winner and not a loser depends largely on seeking the best professional advice.

Dr. Margaret Hartnett obtained her BSc. in Analytical Science from Dublin City University (DCU) in 1990. Dr. Hartnett obtained a PhD from DCU in 1994 for research on the application of artificial neural networks and genetic algorithms for pattern recognition and non-linear modelling. During her PhD research period, Dr. Hartnett worked in the School of Computing and Mathematics in the University of Teesside and obtained a scholarship from the Royal Netherlands government to pursue research in the Technical University of Twente (The Netherlands) from October 1993 to June 1994.

On completing her PhD, Dr. Hartnett was recruited by the Department of Electrical and Electronic Engineering at the Queens University of Belfast (1995-1999) to perform post-doctoral research in the areas of multivariate statistical process control and intelligent clinical diagnostic system design.

Since 1999 Dr. Hartnett has been training as a European Patent Attorney and has gained extensive experience in the drafting and prosecution of Patents in the areas of network design, telecommunications, cryptography, animation, high frequency electronics and chemicals.

Dr. Hartnett is a Registered Irish Trade Mark Attorney, a member of the IEEE, a chartered chemist (member of the Royal Society of Chemistry) and a former member of the steering committee of the Irish-Korean Business Club.

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