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In April 1998, lawyers at the D.C. office of Foley & Lardner landed the firm’s first nanotechnology client — a division of the Eastman Kodak Co. called NanoSystems. NanoSystems sought advice on patents covering its groundbreaking microscopic technique for converting drugs into more soluble and easily taken forms. Since then, Foley & Lardner and other firms have sought to establish themselves as the go-to firms for nanotechnology, the science of building structures from molecular-sized particles measuring one-billionth of a meter. Lawyers predict the technology will rival the semiconductor, the Internet and biotechnology in significance. It’s not the first time law firms have hyped the next big thing — remember Y2K? But if nanotechnology delivers on even a fraction of its promise — and the National Science Foundation envisions a $1 trillion market for products incorporating nanotechnology in a little over a decade — firms will likely be well-served by establishing their expertise early. “We’re looking at nanotechnology as the next big wave,” says Charles Wieland, a partner at Burns, Doane, Swecker & Mathis. At the same time, the rise of nanotechnology is presenting the U.S. Patent and Trademark Office with new challenges as the agency grapples with the best way to handle a growing number of patents in diverse fields. Other government agencies, including the Environmental Protection Agency, the Food and Drug Administration and the Consumer Product Safety Commission are also keeping an eye on nanotechnology, wary of impeding innovation and economic growth, but still uncertain about potential side effects from the technology. Nanotechnology products already exist in the market. Some people may already be sporting stain-resistant Dockers pants created with nano-sized materials, or be swinging tennis rackets containing nano-particles said to make the rackets stronger. Two pharmaceutical products on the market already use NanoSystem’s drug delivery technology, and more are on the way. Indeed, the relationship with NanoSystems has paid off for Foley & Lardner. In 1998, Eastman Kodak sold NanoSystems to the pharmaceutical company Elan Corp., which has retained Foley as IP counsel. And the firm continues to amass nanotechnology clients, offering advice on IP and other legal matters emerging out of the rapidly growing field. Other IP firms such as Sterne, Kessler, Goldstein & Fox and Finnegan, Henderson, Farabow, Garrett & Dunner have formed specialized practice groups and are positioning themselves to attract potential clients. Finnegan started its 10-lawyer nanotechnology group about 18 months ago, mainly to advise clients on patent issues, says partner Ronald Bleeker. Sterne Kessler’s nanotechnology clients include Nanosys Inc., which develops nanostructures for a range of industries, including life sciences, information technology, renewable energy and communications. Partner Donald Featherstone predicts nanotechnology is “just going to permeate” all these industries. The technology has the potential to reach across all areas of the commercial landscape, including chemicals, clothing, food, drugs and computer equipment. But for many nanotechnology startups, actual products exist only in the realm of possibility. So law firms are helping their clients while they work on what’s to come. “The first thing they have to do is protect their property,” Foley partner Stephen Maebius says. Much of the work involves helping startups file patent applications, conduct searches or obtain licenses for existing patents. Corporate lawyers are also being hired to organize the new companies. But venture capital tends to be scarce. Many investors are still sitting on the sidelines waiting for the big nanotechnology product, Maebius says. “There is a reservation or skepticism coming off of the dot-com bust,” acknowledges Josh Wolfe, a managing partner at New York-based venture capital firm Lux Capital, which focuses on early-stage investments in nanotechnology. Some D.C. lawyers are lobbying on behalf of nanotechnology clients. Preston Gates Ellis & Rouvelas Meeds partner Daniel Ritter and associate Paul Stimers have been retained by the NanoBusiness Alliance to help secure passage of legislation authorizing almost $1 billion for research on the new technology to be spread across many federal agencies. If passed, the new law would formalize the $849 million set aside by the Bush administration for fiscal year 2004. The House recently passed the Nanotechnology Research and Development Act of 2003, and a vote on a similar Senate bill is imminent. “The bill is vitally important to the U.S. nanotechnology industry,” says Stimers. “We expect [it] to pass by unanimous consent.” PRESSURE ON THE PTO This month, Burns Doane, seeking to show off its expertise, is sponsoring an introductory forum on nanotechnology. The Patent and Trademark Office is sending some of its examiners for training, says Wieland. The PTO has been reaching out to the nanotechnology community, holding a meeting in September to discuss related topics and concerns. While some, such as Finnegan Henderson partner Bleeker, commend the PTO for hosting the meeting, others believe the agency can do more. For example, the office has no plans to form a new group to evaluate nano-related applications, a move some say could accelerate the patent process. “I do think they could perhaps move a little more quickly,” Foley’s Maebius says. Maebius points to the Japanese Patent Office, which already has formed a separate nanotechnology classification system. The PTO’s response to forming a new technology group? Not yet. “Right now it’s a little premature,” says Bruce Kisliuk, a PTO technology group director. Kisliuk says the training of examiners is a larger concern because of the interdisciplinary nature of the technology. Within the PTO, the technology cuts across several divisions. Examiners in these areas will have to be trained to handle the nano-related patent applications. The PTO is not the only federal agency faced with such challenges. In October, representatives from law firms, government agencies, large corporations and congressional offices met to discuss possible federal rules that would direct the path for nanotechnology in the United States. At the one-day meeting, sponsored by the Woodrow Wilson International Center for Scholars and the Meridian Institute, participants from the EPA, the FDA, the Dow Chemical Co. and others discussed possible regulatory schemes for nanotechnology. So far, the agencies say they will rely on their existing regulations to evaluate the technology and are not planning any immediate changes. Rebecca Cool, an official in the EPA’s Office of Pollution Prevention and Toxics, spoke at the October meeting and said the Toxic Control Substance Act, under which the EPA evaluates new chemical substances, is applicable to nano-related materials. Lynn Bergeson, a partner at Bergeson & Campbell, says because some consumers may be skeptical of the technology, product liability and tort liability issues could emerge for her chemical company clients down the road. If so, the Consumer Product Safety Commission and other health and safety agencies could play a role. Their involvement is not imminent, however. FDA senior scientist Donald Marlowe says that if his agency sees new risk, it will seek new regulation. “But we haven’t seen new risk yet,” he adds. Research continues at universities and such government agencies as the National Science Foundation and the EPA to assess potential safety or environmental risks associated with the science. COMPETITION FROM ABROAD The U.S. nanotechnology industry is crucial for the country’s economic future, said Benjamin Wu, deputy undersecretary for technology at the Commerce Department. “If the hype is to be believed, nanotechnology has incredible economic potential — some would suggest that it could trigger the next industrial revolution,” Wu said at the October conference. But government officials worry that perhaps for the first time in recent memory, the United States does not have a clear advantage in the field. The governments of Europe, Japan, China, Canada and Singapore have invested billions of dollars to advance their nanotechnology efforts. “It’s clear that the first to harness these new technologies will be in an advantageous position to reap the greatest rewards,” Wu said at the October meeting. There is plenty of talk of remarkable possibilities in nanotechnology, including self-cleaning windows, early cancer detection and a cure for deafness. “Some of the things you hear about are achievable, but not for decades,” Wieland of Burns Doane says. But along with the hype comes a fear of potentially harmful inventions, and some fear negative publicity could accompany nanotechnology the same way it has dogged biotechnology. Activists worldwide, for example, protested strongly against the production of genetically modified foods. In some cases, there was a “chilling effect on commercialization” of biotech products, Foley’s Maebius says. “People learned something from [the biotechnology experience]. They don’t want to replicate it,” says David Rejeski of the Woodrow Wilson International Center for Scholars. “Cultural attitude can have an enormous impact on the market.” Michael Crichton’s 2002 novel “Prey,” which was referred to by virtually everyone interviewed for this article, is an example of the fear created by unknown technology. The science fiction novel tells of a nanotechnology experiment gone so wrong it endangers human life. In the introduction, Crichton warns that “our self-deluded recklessness will collide with our growing technological power … in the meeting point of nanotechnology, biotechnology, and computer technology.” Crichton continues, “It is difficult to anticipate what the consequences might be.”

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