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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
smaebius@foley.com
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