Patenting Nanotechnology - Overview of the Role of Public Sector Universities in Nanotech IP Rights

Topics Covered

Background

What Has Changed in the Last 25 Years to Make Universities Increase Their Share of Patent Registrations?

Universities are Patenting Nanotechnologies on an Early and Frequent Basis

Benefits and Drawbacks of Universities Patenting Nanotechnologies

Universities Patenting Nanotechnologies - Statistics for Period 2003 to 2005

Background

One of the unique features of nanotechnology, according to Stanford Law School professor, Mark Lemley, is that universities and public research foundations hold “a grossly disproportionate share of nanotech patents” that he believes are critically important to downstream nanotech products. In 2004, a patent attorney specializing in nanotechnology identified 10 key patents that he believed could have the greatest impact on the development of nanotechnology. Seven of the 10 patents are owned by universities.

What Has Changed in the Last 25 Years to Make Universities Increase Their Share of Patent Registrations?

Because they conduct basic research, it’s not surprising that universities are the early-stage engines for nanotechnology. But unlike early-stage researchers 25 years ago, the new generation of US public researchers has become “extremely aggressive patenters” largely because of the Bayh-Dole Act of 1980 - US legislation designed to encourage technology transfer by permitting universities to patent their federally funded research projects. Before 1980, universities worldwide were granted about 250 US patents per year. By 2003, the number of university-owned patents increased almost 16-fold, to 3,933.

Universities are Patenting Nanotechnologies on an Early and Frequent Basis

Because university labs aren’t in the business of commercializing products, they try to re-coup their research costs by patenting their employees’ early scientific innovations - in the hope of earning royalties or licensing fees. Exclusive licensing is generally the more lucrative deal - and therefore the most appealing to technology transfer offices. In general, universities are acting more and more like businesses. Not only are universities patenting nanotech early and often, they are more frequently licensing their inventions on an exclusive basis.

Benefits and Drawbacks of Universities Patenting Nanotechnologies

US policymakers who favor Bayh-Dole would argue that universities are benefiting society by transferring science and technology to the private sector for commercialization. But in many cases, consumers end up paying twice - once by paying taxes to support government-financed research, and again when they purchase a new, proprietary technology developed with taxpayer funds. With the emphasis on winning exclusive monopoly patents, the traditional academic culture of open communication and exchange is also undermined and eroded.

Universities Patenting Nanotechnologies - Statistics for Period 2003 to 2005

From 2003 to early 2005 the Nanotechnology Law & Business Journal identified 55 publicly announced nanotech patent license agreements - 20 of which involved a university or public research entity as the licensor. Of the 20 license agreements involving university or research entities as licensor, all but one was granted on exclusive terms (and its terms were not disclosed).  

Table 1. Publicly Announced Nanotech IP License Agreements Involving US University or Public Research Entity as Licensor.

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.