Elizabeth Enayati, an attorney with Venture Law Group, answers Foresight
members questions on intellectual property issues in nanotechnology.
This column will discuss the significant changes in U.S. intellectual
property law in 1995 that potentially impact the molecular manufacturing
The Legislature was busy this past year catching up on changes required
by the implementation of GATT (the General Agreement on Tariffs and Trade).
The impact of the change in patent laws resuslting from implementation of
GATT has a disproportionate impact on leading technology, such as nanotechnology.
(Those issues were discussed in detail in the previous
"Law in Technology" column, Update 23.)
Relevant bills which were introduced in Congress over the past year included:
HR8O, to establish a government corporation to oversee the transfer
of government-funded technologies (Rep. Paul Kanjorski, D-Pa);
HR989, to extend the copyright term by 20 years to be consistent with
a similar amendment made in Europe (Rep. Carlos Moorhead, R-Calif);
HR1659, to create a PTO government corporation (Rep. Carlos Moorhead);
HR1733, to provide for the publication of patent applications at 18
months, consistent with the patent system of the rest of the developed world
(Rep. Carlos Moorhead);
HR 8909, to provide for the protection of inventors contracting for
invention development services (Sen. Joseph Lieberman, D-Conn);
HR2233, to provide a limited defense to patent infringement for good
faith prior use of a patented invention by a third party (Rep. Carlos Moorhead);
S81122, to reinforce criminal copyright infringement provisions for
infringement of works worth $5,000.00 or more by including infringement
by distribution on an Internet bulletin board (Sen. Patrick Leahy, D-Vt);
S81284 and HR244l, to set forth the "rules of the road"
for the protection and use of copyrighted works on the "information
superhighway" (Sen. Orrin Hatch, R-Utah, and Rep. Carlos Moorhead,
None of these bills passed by the end of 1995.
The judiciary were equally busy in 1995 deciding important cases impacting
intellectual property rights. The Supreme Court held that color alone could
properly be the subject of trademark protection. The impact of this decision
is not direct for the nanotechnology industry, but it does indicate a more
expansive interpretation of the trademark laws. As the law continues to
expand it may provide protection for certain aspects of nanomachines and
inventions arising out of nanotechnology and molecular manufacturing, including
packaging, marketing, and even the use of trade dress protection (which
provides legal protection for the nonfunctional shape of items, such as
Also in the courts this past year, two of Lemelson's patents were declared
unenforceable because over the 13 years of prosecution for the patents,
Lemelson failed to cite a material reference. As you may recall, the patent
activities of Lemelson have been cited as a basis for much foreign pressure
on the US to change its patent laws. Lemelson was dealt another blow later
in the year by a magistrate who recommended to the District Court for the
District of Nevada that eleven patents asserted against Mitsubishi Electric
Corp., Motorola, and Ford, be held unenforceable for unreasonable and prejudicial
delays during prosecution of the patents. Although both Mitsubishi and Motorola
had settled the suit with Lemelson, Ford continued to defend against the
assertion of infringement, and apparently convinced the magistrate that
its defense was valid.
Early in 1995, a district court held that the menu hierarchy of the Lotus
1-2-3 spreadsheet program was an unprotectable "method of operation,"
in the case of Lotus v. Borland International. Lotus was granted
Supreme Court review of the decision. Oral arguments at the Supreme Court
were held on January 8, 1996, on the day of the big blizzard which shut
down most of the east coast. One week after the oral arguments, the Supreme
Court issued an order, without an accompanying written opinion, affirming
the lower court's decision denying copyright protection for Lotus' spreadsheet.
The Supreme Court was evenly divided, 4 to 4 (Justice Stevens abstained
from the decision). Because of the nature of the case, the decision is only
binding precedent upon the First Circuit. Nevertheless, copyright protection
for GUIs, and some say for software in general, remains restricted. This
is in contrast to increased recognition of copyright protection for software
In a case worth noting, the Court of Appeals for the Ninth Circuit held
that intermediate copying of software is infringing activity. That court
held that infringement occurred when the defendant used the plaintiff's
computers at a customer's site to service the customer's computers, which
then caused the plaintiff's software to be copied to the customer's computer
RAM. By contrast, in the northern district of Texas, a court held that intermediate
copying of software is fair use, to the extent that it is a necessary step
in disassembling the software to discover its unprotectable elements, and
thus not copyright infringement. Both of these decisions are consistent
with previous decisions on these points, and affirm that courts are becoming
increasingly sophisticated about copyrights conveyed to software products.
In a final noteworthy case, the District Court for the Northern District
of California decided, at the end of 1993, that an operator of a computer
bulletin board service and an Internet access provider may be contributorily
liable for copyright infringement. The court held that both such parties
were liable for infringement if they knew or should have known that the
infringing works were uploaded and refused to remove the works from the
The US Patent Office was not idle in 1995. In fact, it was quite busy with
implementing and clarifying the changes in US patent law. The PTO held public
hearings on the proposed 18 month publication of patent applications and
on newly proposed software examination guidelines. To date, the PTO does
not publish US patent applications, and has not officially implemented any
guidelines for examining computer-related inventions.
In 1995 the PTO announced that it would consider software embodied in a
tangible medium, such as a diskette, patentable subject matter. This opened
up the type of patent protection available to software. Again, in a trend
that is counter to the current trend in Europe, the US is strengthening
the patent protection available for software products and weakening the
scope of copyright protection available for software.
Perhaps in response to the diminishing copyright protection in software,
and perhaps in response to the strengthening of copyright protection in
other sectors, the Copyright Office created a Board of Appeals in June 1995
for applicants whose applications for copyright registration are refused.
The Copyright Office has taken an increasingly proactive role in the examination
of copyright registration applications.
All of these changes, and proposed changes, to the intellectual property
laws will have an impact on the type of legal protection available for nanotechnology
inventions. The leading-edge nature of the emerging nanotechnology is a
disadvantage in the face of the changes made to US patent law under GATT.
However, the courts and the PTO are taking increasingly expansive views
of protection for software inventions, either under patent laws or copyright
laws. To the extent that much of nanotechnology and molecular manufacturing
currently reside in software, the increased protection clearly benefits
the software developer. However, the terrain to effective protection became
more complex last year. The requirement for careful maneuvering around various
obstacles (such as the new patent term) is required.
Elizabeth Enayati is an attorney with Venture Law Group, 2800 Sand Hill
Road, Menlo Park, CA. 94025 She can be reached at tel (415) 233-8459, fax
(415) 233-8459, or by email at email@example.com.
The information in this column is not to be construed as legal advice and
is not necessarily the view of Venture Law Group.
BBC's Horizon program last November 13 carried a major program on
nanotechnology that provides an excellent video introduction to the topic.
Featuring interviews with Foresight Institute Chairman Eric Drexler, nanotechnologist
Ralph Merkle at Xerox, computer scientist Carl Feynman, and others, the
program "Nanotopia" provides an excellent layman's introduction
to the technical aspects of nanotechnology (showing, for example, how a
scanning tunneling microscope can precisely move individual atoms) and a
thoughtful discussion of the potential real-world outcomes when nanotechnology
The End of Moore's Law?
Economic considerations may repeal - at least temporarily - Moore's Law,
describing the exponential density increase of semiconductor chips. Gordon
Moore, an Intel founder, observed that since the early 1970s chip density
has doubled every 18 months. Forbes Magazine (March 25 issue)
reports on the newly formulated Moore's Second Law, the exponential growth
in the cost of building a new chip fabricating plant. In coming years, Forbes
says, technology will continue to expand the number of transistors per chip,
but companies won't be able to afford plants to take advantage of the new
technology. "The price per transistor will bottom out between 2003
and 2005," Forbes says. "From that point on there will
be no economic point to making transistors smaller. So Moore's Law ends
in seven years."
Comment: probably true, but only as an extension of existing lithographic
technology. That's why many firms in the semiconductor industry are watching
bottom-up nanotechnology technology very closely.
New Scientist Magazine Reports
on Work Toward "Molecular Construction Kit" at Univ. of Colorado
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Prague-born chemist Josef Michl, now on the faculty at the University of
Colorado, is working to build a "molecular construction kit" using
rods and connectors the size of molecules, reports the English publication
New Scientist in its June 1995 issue.
Michl is working with simple molecular structures that form stiff, flexible
rods. Michl has assembled rods from a mixture of carbon-hydrogen molecules
and carbon-boron molecules, providing fine control over the total rod length.
The rods are built up from such molecules as propellane, a "strained"
form of C5H6, and cubane, a strained form of C8H8.
"Strained" molecules are constructed with bonds that are forced
out of their normal angles - 90° in cubane, for example, compared with
carbon's normal orientation of 109.5°. So far, Michl has made rods
whose lengths vary from 5 to 25 angstrom (10-10 meters), with
precision within 1 angstrom.
Michl envisions that "his construction kit of such rod-like molecules
could be used to make an inert scaffolding on which could be hung more reactive
molecules with useful electronic or mechanical properties," New
Scientist reported. While there are other ways of making rod-like molecules,
Michl's are highly inert. They do not absorb visible or ultraviolet light,
and they are stable at temperatures of at least 200° C and often much
Related work is underway on connectors to join the rods together, the story
reports. Metal atoms would be the simplest solution, offering the useful
quality of strong joints that can be easily disassembled. Different metals
give different binding geometries - square, octrahedral, and so on.
One application Michl proposes is a nano-scale "wind farm," with
turbine propellors made from fused aromatic rings. It could also be run
backwards, using microwaves to spin the rotors and propel helium atoms,
creating nano-scale turbopumps.
Michl's real agenda, New Scientist reports, is "to get chemists
thinking about the possibility of mechanically conceived molecular structures.
When he presented simulations of his turbine concepts at a meeting in Paris
in 1995, he encountered significant scepticism, the magazine reports. It
quotes English chemist Fraser Stoddart, from the University of Birmingham,
that, "'I don't think chemists' contributions will be to make mini-mini-mini
computers or mini-mini-mini cars.'"
"But Michl holds to his belief in molecular machines-if not the turbines
he is working on now, then perhaps molecular waterwheels or something completely
different," New Scientist concludes. He says that many ingenious
molecular devices, including a molecular shuttle devised by Stoddart himself,
for instance, have been invented, but as yet they simply float freely in
solution. "Michl's construction kit could be the 'bricks and mortar',
coupling such devices together to make microscopic machines that are now
just pipe dreams. And if he has set his sights high, he has an answer: 'I
have always taught my children that a hiker who is lost in the woods and
comes to a fork in the trail should always take the branch that goes more
steeply uphill. I should live up to my own admonitions, right?'"
A PAL at USC - The Programmable Automation
Laboratory Newsletter Discusses Molecular Robotics Efforts Underway There
USC Professor Aristides
A.G. Requicha directs the Programmable Automation Laboratory, part of
the Institute for Robotics and Intelligent Systems at the University of
In his December 1995 newsletter he writes, "I gave an invited talk
at the 4th Nanotechnology Conference in Palo Alto, which was probably the
most interesting conference I have attended in the last few years. There
is really a lot of excitement in the nanotech area! People at the conference
reacted very positively to my talk, and thought that putting together robotics
folks with chemists and materials scientists was 'obviously' a great idea.
That means we had better hurry up, before others follow us into the area."
Byte Magazine Looks at Molecular-Based
Byte Magazine, one of the oldest and most respected publications
in the computer world, devotes its April cover to the question, "When
Silicon Hits its Limits, What's Next?" It answers with a look at three
"new directions for the future of computing: Quantum computers, protein
memory, and holographic storage." The story cites Moore's Law (see
above), discusses the rapidly approaching limits
of photolithography, and concludes that for computer memory storage, both
holographic devices and protein molecules as bit storage devices offer hope.
The latter approach is described by Robert
R. Birge at the W.M.
Keck Center for Molecular Electronics at Syracuse University, who has
been working with bacteriohodopsin, a photosensitive protein obtained from
nature. His work is also extensively discussed in the BBC television program
Weird is the name of the Web site where Foresight Director
Chris Peterson has posted a breezy, but informative, article for teenagers
about nanotechnology. It's located athttp://www.spiv.com/nrrrd/weird,a site to help enlist younger minds in the cause of science. "Learn
more about the technical side of things," Chris writes. "The book
Engines of Creation-the
first and still classic vision of a world with nanotechnology-is going up
on the Web, complete and free for all, as you read this. Watch the Foresight
page for the publication announcement. Once you're up to speed, geek out
on sci.nanotech. To become a nano-whiz, try grinding through Nanosystems."
Club Wired hosted nanotechnologist Ralph Merkle late last year.
The interactive online "chat" forum provided by Wired Magazine
invited Ralph to discuss nanotechnology in the context of a Wired Magazine
Museum of Nanotechnology. This waspart of Club Wired's
Future of the Future
series. He describes the experience as "like trying to carry on a dozen
simultaneous conversations by typewriter."
Earthshaking news sometimes appears on the quake.unr.edu site,
but that's where Stephen L. Gillett, Department of Geological Sciences,
has placed the poster and manuscript of his talk at last November's Nanotechnology
Conference. They're available by anonymous ftp in the directory /pub/gillett.
Look for nearterm.wrd, the Microsoft Word file for his poster presentation
"Near-term Nanotechnology: the molecular fabrication of nanostructured
materials," and extract.wrd, his talk on "Nanotechnology,
Resources, and Pollution Control." Both are in MS Word for Windows
format and must be downloaded as binary files.
Do you know of an Internet site related to nanotechnology you'd like
to bring to the attention of the Foresight community? Send the URL and a
brief description to Foresight Update Editor Lew Phelps at Lew@PhelpsConsulting.com.
Please do not duplicate site references already posted on Foresight and
other key nanotechnology sites.
Foresight Institute is greatly expanding its presence on the Web. Check
out the ever-growing content on the site by pointing your Web browser to
Among other things, the site now houses an expanded (and more timely) version
of Foresight Update, the quarterly newsletter of Foresight Institute.
The site also has become a primary means of response by Foresight Institute
to an extended, and highly inaccurate, story in Scientific American
about nanotechnology. (See article
Foresight has expanded its staff to further the growth of its Web site.
"We view the Web as the single most valuable means of expanding awareness
of nanotechnology developments and discussion of relevant issues,"
said Chris Peterson, Director of Foresight Institute.
The "webmaster" for the Foresight Web site is Robert Armas, who
joins the staff part-time. He is a Senior Associate of Foresight Institute.
He previously has served Foresight as a speaker, conference volunteer and
active member since 1991. He recently left a nanotechnology information
service to teach classes about Web Authoring and the Internet. As a freelance
writer, Robert examines how future technologies may impact human cultures
and the planet.
Our World Wide Web activity is ramping up, thanks to Robert Armas and Marcia
Seidler, with major assistance from volunteers Russell
Whitaker (internal webmaster at Silicon Graphics) and Jim
Lewis. Jim did the work to get the 1981
PNAS paper up, and Russell is putting the entire Engines
of Creation into Web format. Meanwhile, thanks to Ralph Merkle
and Josh Hall for maintaining Foresight materials on their sites until we're
fully up to speed.
Thanks also to Ralph Merkle for providing an excellent rebuttal to the Scientific
American news story on nanotechnology (see elsewhere in this issue).
Thanks also to Lew Phelps and Niehaus Ryan
Group for timely media assistance on this. Additional thanks go to all
of those who wrote letters to the editor of SciAm, especially Carl Feynman.
Please keep these coming, and remember to cc Foresight.
Thanks go to Richard Terra for starting implementation of a major new Foresight
project, the annual technical report.
For sending information, we thank John Burke, Jeff Cavener, Gino Coviello,
Chuck Estes, Keith Farrar, Dave Forrest, Robert Freitas, Eric Geislinger,
Frank Glover, Norm Hardy, Mark Haviland, Tad Hogg, Graham Houston, Marie-Louise
Kagan, Rick Lewis, Joy Martin, Hugh McLarty, Anthony Napier, Chris Portman,
Brian Reed, Mark Reiners, Tanya Sienko, Alvin Steinberg, John Walker, John
Finally, ongoing thanks to Josh Hall of Rutgers, who moderates the sci.nanotech
newsgroup, and our two hard-working staffers, Judy Hill and Elaine Tschorn.
These three routinely do massive amounts of work benefiting Foresight and
With nanotechnology-relevant activity ramping up, it's getting harder to
thank everyone who's helping. Your assistance, ideas, and contributions
are greatly appreciated.
Structure Controlled Macromolecules of Nanoscopic Dimensions, symposium
within Materials Research Society Meeting, April 8-12, 1996, San Francisco.
Includes nanoscale assemblies and nano-devices. Tel 412-367-3004, fax 412-367-4373,
email firstname.lastname@example.org, Web http://www.mrs.org
European Nanotechnology Initiative, April 9-11, Copenhagen Science Park.
Contact BioSoft, tel 45-3917-9828, fax 45-3927-9011. Minnesota Molecular Nanotechnology Study Group, regularly scheduled
monthly meeting April 10 and second Wednesday of each following month, at
Science Museum of Minnesota, 30 East 10th Street, St. Paul MN. Contact Steve
Vetter, email email@example.com. International Conference on Protein Folding and Design, April
23-26, NIH, Bethesda, MD. Contact Ms. Feldman, tel 301-496-2968, fax 301-496-8496. De la microtechnique a la nanotechnologie: évolution ou révolution?,
April 24, Centre d'Appui Scientifique et Technologique de L'Ecole Polytechnique
Federale de Lausanne, Switzerland. Contact CAST, tel 41-21-6933575, fax
41-21-693-4747. Proximal Probe Fabrication, Manipulation, and Measurement, June 23-28,
Gordon Research Conference, tel 401-783-4011, fax 401-783-7644, email firstname.lastname@example.org. Chemical and Biological Nanostructures, June 23-28, Gordon Research
Conference, see above. Protein Engineering, June 30-July 5, Gordon Research Conference,
see above. Workshop on Computational Nanotechnology, July 11-13, Colorado Springs
Marriott. Contact Dr. Sally Meyer, tel 719-389-6437, email email@example.com. Fullerenes (C60 and related), July 21-26, Gordon Research Conference,
see above. 4th International Conference on Nanometer-Scale Science and Technology,
Sept. 8-12, Beijing. Includes supramolecules, molecular recognition, SPM
fabrication of devices, self-assembly, self-assembled molecular nanostructures.
Contact Prof. Shijin Pang, fax 86-10-255-6598, email Pang@image.blem.ac.cn Micro- and Nano- Engineering 96, Sept. 23-25, Glasgow, Scotland.
Contact Dr. Carol Clugston, fax 0141-330-4907, firstname.lastname@example.org German Conference on Bioinformatics, Sept. 30-Oct. 2, University
of Leipzig. Includes molecular modeling, molecular recognition, self-organization,
DNA computing. Contact GCB '96, tel 49-341-9716100, fax 49-341-9716109,
emailGCB96@imise.unileipzig.de Nanometer-Scale Science and Technology Division meeting, American
Vacuum Society, Oct. 14-18, Philadelphia. Includes session NS7 on "Nanofabrication:
Manipulation of Atoms and Molecules." Contact AVS, tel 212-248-0200,
fax 212-248-0245, email email@example.com,
Senior Associate Gathering, Oct. 18-20, 1996, Palo Alto. Foresight and
IMM Senior Associates meeting covering technical, entrepreneurial, applications,
social topics related to nanotechnology. Contact Foresight, tel 415-917-1122,
fax 415-917-1123, email firstname.lastname@example.org Fifth Foresight Conference on Molecular Nanotechnology, Nov. 5-9,
1997, Palo Alto, CA. Enabling science and technology, computational models.
Contact Foresight, tel 415-917-1122, fax 415-917-1123, email email@example.com,