Carbon Nanotubes - Who Owns the Patents and IP Rights for Carbon Nanotubes?

Topics Covered

Background

IBM and Patenting Carbon Nanotubes

Carbon Nanotechnologies Hold the Majority of  Patents for Carbon Nanotubes

The Patenting Strategy Employed by Carbon Nanotechnologies in the Carbon Nanotube Sector

Which Products Can Carbon Nanotubes Be Used In?

Hyperion Catalysis and Multi-Wall Carbon Nanotubes

List of Companies and Organizations Who Hold Patents for Carbon Nanotubes

Producers of Carbon Nanotubes in Europe and Asia

Patenting Carbon Nanotubes - an Overview of the Current Climate  

Background

Single-wall carbon nanotubes were discovered in 1991 by Sumio Iijima of Japan, a researcher for Japanese computer giant, NEC Corporation. In 2004, the company asserted that any company that wants to manufacture or sell carbon nanotubes must first negotiate a license on NEC’s two seminal patents. NEC is expected to license its carbon nanotube patents widely; last year, Japan’s Sumitomo Corporation was the first company to negotiate a license.

IBM and Patenting Carbon Nanotubes

IBM also holds an early and fundamental patent on single-wall carbon nanotubes. US Patent No. 5,424,054 has been identified by patent lawyers as one of the ten most important patents that could have an impact on the future development of nanotech. IBM’s patent was licensed to Carbon Nanotechnologies, Inc.

Carbon Nanotechnologies Hold the Majority of Patents for Carbon Nanotubes

Carbon Nanotechnologies Inc. (CNI) is the self-described “pre-eminent world producer” of carbon nanotubes. The Houston, Texas-based company was founded in 2000 by Rice University Nobel Laureate and entrepreneur, Richard Smalley. According to CNI’s president, Bob Gower, the company holds a portfolio of 30 patents related to carbon nanotubes, and about 12 of them give CNI a lock on the nanotube market. In addition, CNI has 70 patent applications pending that include 4,000 claims on nanotube compositions, methods of production and end-use applications. “We expect to be the supplier in this arena,” Gower told ‘The Houston Chronicle’.

The Patenting Strategy Employed by Carbon Nanotechnologies in the Carbon Nanotube Sector

The company sees its patent portfolio as the key to the company’s survival. CNI’s chief financial officer told ‘Small Times’, “IP protection is critical for everything we’ve done. IP gives us the freedom to price appropriately and keep others from nipping at the door.” CNI’s strategy is to stake claims on the dominant methods used to manufacture carbon nanotubes. CNI founder Richard Smalley asserts that his company has “an exceptional intellectual property position in all the process routes” that are considered practical for large-scale commercial production of single-wall carbon nanotubes.    

Which Products Can Carbon Nanotubes Be Used In?

CNI has about 500 customers, including many commercial firms that are purchasing tiny amounts of nanotubes to test in products ranging from plastics, batteries, water purification systems to aerospace, defense and space exploration. One corporate client, Korean electronics titan, Samsung, is using CNI’s carbon nanotubes to create a new generation of energy-saving, flat-screen televisions.

Hyperion Catalysis and Multi-Wall Carbon Nanotubes

Hyperion Catalysis based in Cambridge, Massachusetts (USA) claims that its multi-wall carbon nanotubes were first synthesized in 1983, and the company holds a seminal patent issued in 1985. The company sells multi-wall nanotubes dispersed in a range of plastics for commercial automotive and electronics applications. Worldwide, there are less than 20 companies making commercial quantities of carbon nanotubes. 

List of Companies and Organizations Who Hold Patents for Carbon Nanotubes

Table 1. Carbon nanotube patents issued by US PTO, from 1999-2004 (the data was collected on 25 April 2005).

Producers of Carbon Nanotubes in Europe and Asia

Nanocyl S.A. (Belgium) is the leading manufacturer and developer of carbon nanotubes in Europe. Other players include, for example: Nanoledge in France, Rosseter Holdings in Cyprus; South Korea’s ILJIN; Moscow’s Nanocarblab; Shenzhen Nanotech Port Co. in China and Tokyo’s Carbon Nanotech Research Institute.  

Patenting Carbon Nanotubes - an Overview of the Current Climate 

·         To the extent that carbon nanotubes represent an important component in nanotech-related materials, they will affect traditional commodity markets and demands for raw materials. Concerns about ownership and control of carbon nanotubes are especially relevant to the global South.

·         ETC Group’s list of top patent assignees (see table 1) of US patents related to carbon nanotubes reveals that ownership of carbon nanotube patents is highly fragmented - there are numerous players in diverse industries.  

·         There were 140 different primary patent examiners for the 257 patents on nanotubes issued by the US PTO. The lack of uniform handling increases the likelihood that different examiners in different departments reviewed different prior art and this could result in overlapping patent claims.

·         ETC Group agrees with analysts who conclude that there currently exists a nanotube patent thicket. A swarm of existing patents, whose claims are often broad, overlapping and conflicting, means that researchers hoping to develop new technology based on carbon nanotubes must first negotiate licenses from multiple patent owners.

·         Lux Research, a nanotechnology consulting firm, recently conducted its own study of the IP nanotech landscape. The Lux report concludes that “nanotube patents look messy in electronics,” but they found that carbon nanotube patents are not a problem in all areas (especially energy, healthcare and cosmetics).

·         Since patent databases do not always reveal the current ownership of patents or disclose assignees, our list of leading carbon nanotube patent assignees is not a true reflection of a company or institution’s dominant position. CNI claims that it has an exceptional IP position in all the process routes for producing carbon nanotubes, for example, but it is not immediately apparent by conducting patent searches. However, CNI has licensed nanotube patents from Rice University. (Richard Smalley is both a Rice faculty member and founder of CNI.) 

·         The number of US patents already granted relating to carbon nanotubes is considerable, but the number of patent applications received by US PTO from 2001-2004 is far greater – suggesting that there could be increased activity in the nanotube patent area in the immediate years ahead. US PTO patent applications do not always reveal patent assignees - so it is impossible to predict which companies/institutions are most actively seeking patents in this area, or by whom the patents, if granted, will be controlled.    

Note: A complete set of references can be found by referring to the original document.

Source: ETC Group report entitled ‘Nanotech’s “Second Nature” Patents: Implications for the Global South’, April/May 2005.

For more information on this source please visit the ETC Group.