NEC Demands License Fees For Carbon Nanotubes

apirkle writes "As reported in this article on EEtimes.com, NEC has claimed today that they own 'essential patents' on carbon nanotubes, and that all companies who make or sell nanotubes must purchase a license. NEC has a press release stating that they have already sold a license."

Comments

NEC

[Anonymous Coward]

..the SCO of the Science World.

"All your nanotubes are belong to us"

FP!

Re:NEC

[KingOfBLASH]

..the SCO of the Science World.

Actually this is a situation where patents may be doing what they're supposed to -- providing financial incentive for researchers. If NEC has, indeed, put in the research dollars to develop carbon nanotubes, they should reap the benefits of the use of their research.

Greedy

[addie]

Greedy, greedy, greedy. Take some responsibility, take a hit for the future, realize that you're part of the world too. Carbon nanotubes have the potential to be everywhere, from space elevators to shoe laces to medical devices. NEC should step back and work on a plan that would allow their technology to be used by other companies, but the credit can still go to NEC. Money ain't everything.

Sorry for the disjointed rant, but this is a very annoying announcement.

Re:Greedy

[tolan-b]

Unfortunately money is everything when it comes to companies... It's all about shareholder value :(

Re:Greedy

[addie]

I do understand what they're trying to do. My problem is with the fact that there have been researchers the world over working on carbon nano-tubes for years, using different methods and achieving different results.

I suppose the patent process will distinguish what is what, but is a carbon nanotube a carbon nanotube, no matter what process was used to produce it? What I'm saying is, does the patent apply to the end result or the process itself?

I just don't want to see such a valuable invention huddled away in a proprietary corner.

Re:Greedy

[Goldsmith]

I work in a nanotube lab. We don't use any of the methods developed at NEC. As you said, you don't know the details of this patent, so it seems reasonable. Well, allow me to enlighten you.

They did not invent a new material. They turned on their microscope and found it. Nanotubes are simply a stable phase of carbon. They went through the trouble of trying to grow them, but if they hadn't they still would have found them, because the microscope stage they were using comes covered in them. You can't have any form of amorphous carbon (i.e. coal) without having some nanotubes.

So, they can patent the use of ANY carbon nanotube, in ANY device?

There is a patent for nanotubes as wires, and one for using nanotubes as semiconductors. These are basic facts of physics, provable in a couple of pages of work, not the result of experimentation or laboratory prowess. Are companies allowed to patent "silicon is a semiconductor" or "copper is a conductor"?

Sure, these companies could patent a specific growth technique. In a few months, there will be a dozen papers on how to do it better. Some people can do this stuff better than they can. There are a lot of hard working, smart people in this field who don't want to work for the NECs or IBMs. Rather than compete, the large labs leverage bogus patents to use OUR inventions for free.

No one has a patent on diamond or even things like superfluid helium, to have a patent on a specific phase of an element is absurd!

Re:Greedy

[meburke]

Interesting post. We are beginning to see more of "Intellectual-Property-as-a-dynamic-system." The game is to put obstacle in your competitor's way to maintain an advantage for yourself. The Asian countries play the game differently from the Western countries, and it's worth reading a book like, "The Asian Mind Game" by Chin-Ning Chu to see the difference. IMO, companies and individuals should be compensated for their intellectual achievements and research, but there ought to be a penalty for applying for a frivolous patent. (Interestingly enough, in Japan it's customary for a company suing another company to post a bond that will compensate the defendant if the lawsuit doesn't prevail. It is sometime done in the US, but the argument against it is that it is an unfair obstacle for those seeking justice through the courts.) The US derives an enormous benefit from patents. Billions of dollars are entering the US through channels not tracked by the "Balance of trade" figures as a result of licensing agreements with other nations. Japan licensed millions of dollars worth of technology and improved on it, and is still paying enormous amounts of money in license fees. Remember penicillin? The knowledge was put in the public domain and languished for 40 years because no companies felt they could afford to tool up to produce it since they would never have any competitive advantage. If it wasn't for WWII, penicillin production might not have gotten started. I don't resent the ease with which a company can apply and file a patent, but I resent the hell out of the high costs of challenging or defending a patent. Mike

Re:Greedy

[Anonymous Coward]

I am working in a nanotube lab, too. There are lots of patents out there, describing specific methods of nanotube production. The oldest nanotube patent so far goes back to 1985. It was a US patent of a company sitting in Massachusetts. No joke, this is 6 years before the "invention" of nanotubes by NEC. They simply called it carbon nanofibrils but not carbon nanotubes. But essentially, it is the same material. So, even if it might be possible to patent nanotubes as such (maybe in Japan only) their patent is at least questionable. CNI is another company which owns nanotube synthesis patents and do not need to rely on those patents by NEC.

Micropayment

[AtariAmarok]

I'd be happy to give them a micropayment for their nanotubes.

Re:Micropayment

[Scrameustache]

happy to give them a micropayment for their nanotubes.

You overpaid.

I got it...

[hookedup]

New corporate motto "holding up progress, one patent at a time"

Obligatory SCO joke

[Anonymous Coward]

"That will be $699 per micron of nanotube length. Pay up now. Make it snappy: we have an auto-parts company to sue tomorrow."

tricky

[ajagci]

I think it used to be the case that (for the most part) you couldn't claim a patent on a substance, only on its manufacture and its applications. That seems pretty sensible to me.

Sadly, that principle seems to have eroded away, and there are many patents on substances now that cover all future applications and ways of manufacturing them. Seems to me like that runs against the purpose of the patent system: to encourage useful innovation. I mean, if you can just claim all possible ways of manufacturing a substance and all possible ways of using it by just describing the substance, why would anybody else want to invest in finding better ways of manufacturing it or new applications for it?

In any case, this particular patent should run out in less than a decade, so it probably won't be all that significant.

Re:tricky

[Muhammar]

1. You can patent substance if it is new invented material (which does not occur naturaly, in plants or corrals, for example). The tiniest possible modification of the naturaly occuring substance can be patented, as long as you can prove that it does not occur naturaly and you can tell the differnece. (And fake up some argument why it is better than the original stuff)
2. You can patent process of manufacture of anything. This kind of patents is not easy to enforce because it is very easy to modify the patented procedure with a redundant (or insignificant)change and claim it is essential and non-obvious. And companies are not required to disclose their processes, so it is hard to prove they are using the patented method.
3. You can patent the application of the material - the end use. The question then is how obvious or non-obvious the application realy is and what kind of practical examples of the application patent has - proving feasibility of the idea.

I would expect the future litigation involving patents from the second and third category. They need a lot of money to hire big-ass lawyers for bullying other companies. But sometimes it is easier to pay few% on royalities than risking lawsuit. (Unsettled lawsuits, frivolous or not, can make investors nervous, and licencing in the technology looks like prudent investment)

I used to work for a small biotech company which claimed to have key patents for generation and using combinatorial libraries of small drug-like chemicals for pharma research. Everybody is now using the technology, and our company got nothing out of it except for a harrasment kind of "due dilligence" lawsuit from one of the minority investors, which did cost us few millions on lawyers.

They may have a point

[tsa]

If they patented the structures they show in the images on their website (I can't read Japanese so I'm not sure) then they may have a point (and the world may have a big problem). On the other hand, carbon nanotubes are things that are easily formed in nature (it's the purification process that's complicated, and of course the processes involved in making carbon nanotubes with specified properties). Therefore patenting carbon nanotubes is like patenting iron, or silicon oxide. And I'm not sure if such a patent will hold in court.

What really bugs me about patents...

[Gadzinka]

What really bugs me about patents isn't the ``obvious inventions'' like ``internet auctions'' or ``method of combining two numbers in the way that the end result consists of the sum of the numbers''.

I really can't understand patents for engineering methods and devices that cannot be build at the time of patent's granting. IMO working prototype should be a part of patent application. Lack of working prototype means that you don't know how to build it, hence you shouldn't own the patent in the first place.

Otherwise what's to stop me from patenting ``cold fusion'' and sitting on those patents while bribing politicians to extend the patent expiration date ad infinitum and waiting for someone else to actually make it possible?

Robert

PS Mark my words: patents' expiration extension will be the next big thing like the copyrights extension is now. ``Meat and metal'' technologies didn't need it (they usually were obsolete long before patent's expiration), but software and business methods patents are a perfect target for such campaign.

Candlelight vigils no longer free

[Jtheletter]

In other news today, a candlelight vigil for a young boy with terminal lung cancer was broken up by NEOCorp private police when participants refused to pay a licensing fee for the billions of carbon nanotubes they were blantantly producing by burning wax.
When asked for comment a NEOCorp spokesman said, "It really is too bad about that kid dying or whatever, but we've got to focus on the real issue here, our IP was being flagrantly abused in public with no monetary compensation to us, and we are not going to sit idly by and allow the screaming naked masses to continue to profit from the light and heat given off as a byproduct of producing NEOCorp's patented molecules."
When asked for comment on why NEOCorp felt it had the right to patent naturally occuring substances that it merely found rather than explicitly created, the original reporter was rapidly bludgeoned to near-death and taken to NEOCorp's multitrillion dollar headquarters (previously Japan) for immediate Company Re-Education.

Materials patents?

[El]

So, can I patent gold, silver, and platinum, and start demanding fees from Jewelry and precious metal manufacturers? Don't carbon nanotubes ever occur in nature? Seems to me the rule was that they could patent their method for building them, but if you could figure out another way to do it, it was fair game. Now NEC is claiming it is impossible to make a carbon nanotube without infringing their methods? What, is everybody infringing on step 1: "First, take some carbon..."?!?

references

[Avishalom]

1. Dave Barry wrote an important piece concerning nanotube application (in layperson's terms , carbon nanotubes are nanotubes made of carbon)
It also talks about those dummy close door elevator buttons (whose cousins, the crosswalk buttons were talked about a lot)

2. the original title was Dave Barry: Lawyers needed, many, to test space elevator , i'll get to that in a second.


OK let sum it up
youv'e got

a - a women suing her successfull son for slander (or ST) trying to get rich.
b - a women pretrnding to fall over in a day after Xmas DVD sale to sue the company (didn't it turn out that it was the 16th time she sued them ... (while being employed))
c - companies patenting facts, ideas , linux code.
d- a women suing (and winning) a department store claiming she sprained her arm tripping over a toddler (her own child)
e - a man suing his neighbor (and getting 5 figures) claiming the dog attacked him (which is true except that "he started it" by repeatedly shooting the dog with a BB gun)
(i appologize for not citing the reference but you can google for outrageous lawsuits to see that i downtoned)
These are syndromes of a society with too many lawyers, coupled with distorted get rich quick ideas


------ why don't all these people just meet up with wealthy nigerian businessmen/inheritors and split the $20,000,000,023.85 that just needs a resourceful individual like yourself ..

NEC does not have US patent on nanotubes

[Rene_Daley]

As far as I can tell, NEC does not have a patent in the US on nanotubes themselves. NEC does have 5 US patents involving nanotubes:
1 6,331,690 Process for producing single-wall carbon nanotubes uniform in diameter and laser ablation apparatus used therein
2 6,157,043 Solenoid comprising a compound nanotube and magnetic generating apparatus using the compound nanotube
3 5,698,175 Process for purifying, uncapping and chemically modifying carbon nanotubes
4 5,641,466 Method of purifying carbon nanotubes
5 5,627,140 Enhanced flux pinning in superconductors by embedding carbon nanotubes with BSCCO materials

None of these patents cover the existence of nanotubes -- but the patents do cover various methods of creating nanotubes. I found 118 US patents which mention carbon nanotubes in the abstract to the patent at the US Patent and Trademark Office.

There are other patents which concern creation of carbon nanotubes which predate NEC's patents. For example: 5,482,601 Method and device for the production of carbon nanotubes.

Accordingly, I doubt that NEC has a patent on carbon nanotubes themselves. Instead, it appears that NEC has some patents on methods for manufacturing carbon nanotubes. If these methods are more efficient than other methods, I do not have any problem with NEC selling licenses to use their processes.