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Territoriality In Nanotech Patents
& Impact On US Manufacturing
Stephen B. Maebius
Foley & Lardner
3000 K St. N.W.
Washington D.C. 20007
(202) 672-5569
[email protected]
www.foley.com
©2004 Foley & Lardner LLP
Three Areas Of Patent Law Which
May Impact US Manufacturing
Bayh-Dole licensing limitations
Domestic patent law restricting
importation
Difficulties in obtaining international
patent rights - may facilitate overseas
production
©2004 Foley & Lardner LLP
Bayh-Dole Licensing Restrictions
Sec. 209(b): licensee must agree “that any
products embodying the invention or produced
through the use of the invention will be
manufactured substantially in the United States”
many nanotech patents are and will be subject
to this provision, but most will not
may be unclear whether end product was
produced through use of the governmentsupported invention
©2004 Foley & Lardner LLP
Domestic Patent Law Restricting
Importation
Sec. 271(g): prevents importation of a “product” made
offshore by a process patented in the US
Problem: Bayer v. Housey held that information made by a
biotech or nanotech process is not blocked (e.g., assay
using nanoarray to discover new drug identity)
May encourage offshore research to discover end products
not covered by US patents (Maebius & Wegner, NLJ, Dec.
24, 2001)
©2004 Foley & Lardner LLP
Difficulties In Obtaining International
Patent Rights
Costs are prohibitive for many start-ups
Not all countries have reliable
enforcement systems
Failure to obtain rights in other countries
may encourage overseas competitors
©2004 Foley & Lardner LLP
Conclusions
Strong US patent system is encouraging
investment in nanotech start-ups
Limited manufacturing of products at this time; now
mostly research jobs are being created
Domestic patent law reforms may help, but only to
a limited extent
Need to continue push for global patent
harmonization to make international patent rights
affordable & effective for US nanotech businesses
©2004 Foley & Lardner LLP