By BARNABY J. FEDER
Published: June 4, 2007
George M. Whitesides, a Harvard University chemist, is a renowned specialist in nanotechnology, a field built on the behavior of materials as small as one molecule thick. But there is nothing tiny about the patent portfolio that Harvard has amassed over the last 25 years based on work in his lab.
Today, Harvard and Nano-Terra Inc., a company co-founded by Professor Whitesides, plan to announce the exclusive licensing for more than 50 current and pending Harvard patents to Nano-Terra. The deal could transform the little-known Nano-Terra into one of nanotechnology’s most closely watched start-ups.
“It’s the largest patent portfolio I remember, and it may be our largest ever,” said Isaac T. Kohlberg, who has overseen the commercialization of Harvard’s patent portfolio since 2005. Nano-Terra, based in Cambridge, Mass., said that the patent filing and maintenance costs alone top $2 million.
Terms of the deal were not disclosed, but Harvard said that it would receive a significant equity stake in Nano-Terra in addition to royalties.
The patents cover methods of manipulating matter at the nanometer and micron scales to create novel surfaces and combinations of materials.
A nanometer is a billionth of a meter (proteins and the smallest elements in many microprocessor designs are measured in nanometers); a micron is 1,000 times larger (pollen and many single-celled animals are measured microns). Such technology could lead to products to make better paints and windows, safer and cleaner chemicals, and more-efficient solar panels.
The patents cover virtually all nonbiological applications of work performed by Professor Whitesides and dozens of doctoral students over the last decade. The biology related research — mostly in health care — had previously been licensed to other companies involving Professor Whitesides, including Genzyme, GelTex (sold to Genzyme for $1.2 billion in 1993), Theravance, and two privately held start-ups, Surface Logix and WMR Biomedical.
Nano-Terra, though, is selling no products. It is just offering manufacturing and design skills in realms where flexibility and low cost are crucial.
The best known patents cover soft lithography, Professor Whitesides’s method of depositing extremely thin layers of material onto a surface in carefully controlled patterns. It can work over larger surfaces than photolithography, which is widely used to make microchips. Perhaps even more intriguing, soft lithography can work on highly irregular or rounded surfaces where photolithography is all but impossible.
But while nanotechnology’s promise remains immense — the potential advances in energy, medicine and information technology have attracted billions of dollars in government and private investment in recent years — it is not yet clear which patents will prove valuable.
“You can’t just go to market with a huge patent portfolio and a promising pipeline but no revenues,” said Stephen B. Maebius, a patent lawyer in Washington and a nanotechnology expert. “That was the lesson of Nanosys,” he said, referring to the aborted 2004 public offering of a company based in Palo Alto, Calif., that was the highest-profile nanotechnology start-up backed by venture capital.
Nano-Terra was founded in 2005 with the goal of creating a home for the Whitesides patents. Its management team includes the vice chairman, Carmichael Roberts, a former student of Professor Whitesides’s and a partner with him in two other companies; the chief executive, Myer Berlow, a former AOL Time Warner marketing executive; and the president, Ueli Morant, a former market executive at I.B.M. and Philips Consumer Electronics.
Nano-Terra is part of a growing segment of nanotechnology start-ups. Other prominent academic researchers who have started nanotech companies include Chad A. Mirkin of Northwestern University (Nanosphere and NanoInk) and the late Richard E. Smalley of Rice University (Carbon Nanotechnologies). Other leading Harvard professors whose research has led them and the Harvard patent office into entrepreneurial nanotechnology include Thomas Rueckes (Nantero) and Charles M. Lieber and Hongkun Park (Nanosys).
Correction: June 5, 2007
An article in Business Day yesterday about Harvard’s plans to license more than 50 patents to Nano-Terra, a nanotechnology start-up, misstated the surname of the vice chairman of the company. He is Carmichael Roberts, not Rogers.