Foresight Update 24
Page 4
A publication of the Foresight Institute
 Law
in Technology
by Elizabeth Enayati
 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 industry.
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,
respectively).
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
molecular machines).
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 Europe.
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 bulletin board.
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 eenayati@venlaw.com.
The information in this column is not to be construed as legal
advice and is not necessarily the view of Venture Law Group.
Media Watch
BBC Carries Major Program on Nanotechnology
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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 is realized.
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
[Editor's Note: This page has been optimized
for Netscape 2 and later. If you are using a browser, such as
Netscape 1.1, that does not support the html tag for
superscripts, please be aware that an number like
"2x109" is meant to be scientific notation for "2
times ten raised to the 9th power," and that "e2"
means "e squared," etc.]
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 higher.
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 Southern California.
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."
Those interested in nanotechnology-relevant work at USC can visit
their Web site at http://www-pal.usc.edu.
Byte Magazine Looks
at Molecular-Based Computer Alternatives
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 "Nanotopia," discussed above.
Web
Watch
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 at http://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 scenario, The
Museum of Nanotechnology. This was part 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
Upgrades Web Site
Update Expands in Digital Format
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 http://www.foresight.org.
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 above.)
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.
Thanks
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 Wynkoop.
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 IMM.
With nanotechnology-relevant activity ramping up, it's getting
harder to thank everyone who's helping. Your assistance, ideas,
and contributions are greatly appreciated.
-Chris Peterson, Director
Upcoming
Events
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 info@mrs.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 svetter@mmei.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 grc@grcmail.grc.uri.edu.
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 smeyer@cc.colorado.edu.
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, email
c.clugston@elec.gla.ac.uk
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, email GCB96@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 angela@vacuum.org,
Web http://www.vacuum.org
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 foresight@foresight.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 foresight@foresight.org,
Web http://foresight.org/Conferences/MNT05/Nano5.html
From Foresight Update 24, originally
published 15 April 1996.
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