Single-wall carbon nanotubes were discovered in 1991 by Sumio Iijima of Japan, a researcher for Japanese computer giant, NEC Corporation. In 2004, the company asserted that any company that wants to manufacture or sell carbon nanotubes must first negotiate a license on NEC’s two seminal patents. NEC is expected to license its carbon nanotube patents widely; last year, Japan’s Sumitomo Corporation was the first company to negotiate a license.
IBM also holds an early and fundamental patent on single-wall carbon nanotubes. US Patent No. 5,424,054 has been identified by patent lawyers as one of the ten most important patents that could have an impact on the future development of nanotech. IBM’s patent was licensed to Carbon Nanotechnologies, Inc.
[LBE note: US 5,424,054 is based on an application filed May 21, 1993. It cites only two US patents, none to NEC. To date, it has been cited by 43 US patents.
Claim 1 recites: A process for producing hollow carbon fiber having a wall consisting essentially of a single layer of carbon atoms comprising the step of contacting carbon vapor and recovering the fiber product under conditions effective to produce the hollow fiber with cobalt vapor.
Claim 1 thus has a significant limitation about carbon vapor.
Claim 3 recites: A hollow carbon fiber having a wall consisting essentially of a single layer of carbon atoms.
Claim 3 thus has a significant limitation --consisting essentially of-- which forecloses the presence of (catalytic) metal species and forecloses the presence of edge species such as oxygen or hydrogen.
The patent cites none of the prior patents of R.T.K. Baker or research in Boudouard carbon from the 19th century. As to Baker, the references cited by the patent (first page) include only Baker, "Catalytic Growth of Carbon Filaments", Carbon, vol. 27 No. 3, pp. 315-323, 1989 (no month), even though most of Baker's significant work on filamentary carbon (involving CAEM) took place in the 1970's]
Carbon Nanotechnologies Inc. (CNI) is the self-described “pre-eminent world producer” of carbon nanotubes. The Houston, Texas-based company was founded in 2000 by Rice University Nobel Laureate and entrepreneur, Richard Smalley. According to CNI’s president, Bob Gower, the company holds a portfolio of 30 patents related to carbon nanotubes, and about 12 of them give CNI a lock on the nanotube market. In addition, CNI has 70 patent applications pending that include 4,000 claims on nanotube compositions, methods of production and end-use applications. “We expect to be the supplier in this arena,” Gower told ‘The Houston Chronicle’.
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· To the extent that carbon nanotubes represent an important component in nanotech-related materials, they will affect traditional commodity markets and demands for raw materials. Concerns about ownership and control of carbon nanotubes are especially relevant to the global South.
· ETC Group’s list of top patent assignees (see table 1) of US patents related to carbon nanotubes reveals that ownership of carbon nanotube patents is highly fragmented - there are numerous players in diverse industries.
· There were 140 different primary patent examiners for the 257 patents on nanotubes issued by the US PTO. The lack of uniform handling increases the likelihood that different examiners in different departments reviewed different prior art and this could result in overlapping patent claims.
· ETC Group agrees with analysts who conclude that there currently exists a nanotube patent thicket. A swarm of existing patents, whose claims are often broad, overlapping and conflicting, means that researchers hoping to develop new technology based on carbon nanotubes must first negotiate licenses from multiple patent owners.
· Lux Research, a nanotechnology consulting firm, recently conducted its own study of the IP nanotech landscape. The Lux report concludes that “nanotube patents look messy in electronics,” but they found that carbon nanotube patents are not a problem in all areas (especially energy, healthcare and cosmetics).
· Since patent databases do not always reveal the current ownership of patents or disclose assignees, our list of leading carbon nanotube patent assignees is not a true reflection of a company or institution’s dominant position. CNI claims that it has an exceptional IP position in all the process routes for producing carbon nanotubes, for example, but it is not immediately apparent by conducting patent searches. However, CNI has licensed nanotube patents from Rice University. (Richard Smalley is both a Rice faculty member and founder of CNI.)
· The number of US patents already granted relating to carbon nanotubes is considerable, but the number of patent applications received by US PTO from 2001-2004 is far greater – suggesting that there could be increased activity in the nanotube patent area in the immediate years ahead. US PTO patent applications do not always reveal patent assignees - so it is impossible to predict which companies/institutions are most actively seeking patents in this area, or by whom the patents, if granted, will be controlled.
[LBE note: the article does not discuss the more than 700 US patents on fullerenes.]