Given the increasing role of intellectual property (IP) in academic research, it is important for academic scientists to gain greater awareness and knowledge of the various issues involved with IP resulting from their research and inventions. In addition, the line between academic and industrial research has been blurred, and a large amount of crossover exists due to corporate funding of academic research and collaborations between company and university laboratories. These and other factors have complicated the push toward technology transfer in universities. As commercialization has become inseparable from university research, there is now an essential need for academics to have a greater understanding of the processes involved. Intellectual Property in Academia: A Practical Guide for Scientists and Engineers fills this need, providing an indispensable source of information for researchers in academia.
You’ve Just Invented a Gadget – What Now?
Written by a select team of IP professionals, most of whom also have years of experience as scientists, this volume addresses IP issues relevant to the academic community—including ways to efficiently deal with the structural constraints inherent in the university environment. Scientists and engineers will benefit from the authors’ insights and their advice on how to establish good communication with university Offices of Technology Transfer. This perspective affords a common language and facilitates a smoother path through IP procedures. The book covers the best approaches to determine invention novelty by prior art searching and gives step-by-step guidance in using the best modern electronic patent databases. It presents a unique practical approach for assessing the monetary value of ideas and provides software for invention valuation, which can be used even during the early stages of an invention’s development. The book also discusses invention ownership, which is a crucial issue for scientists employed by universities.
Get Answers to Your Questions about the Steps in Invention Commercialization
Taking a more comprehensive approach than a basic how-to book on patent law, this reference answers inventors’ frequently asked questions about employment legislation as well as business and market estimation, invention priority registration, and other necessary steps for the successful commercialization of university inventions. It presents encouraging examples of academic patent successes, describing both the right moves and common mistakes made by scientists. It also provides practical advice on patent writing, filing, and prosecution, useful for both academic and industrial researchers. Other key topics addressed by the text include using copyrighted material, protecting material with copyrights, crucial IP legislation, business models, and new trends and changes in the U.S. patent office. In short, readers will find that this book provides a pathway for easing their journey through the IP process.
Table of Contents
Introduction to Intellectual Property in Academia
The Basics of Patenting, Nadya Reingand
Is Your Invention Novel?: The Issue of Prior Art, Farhad Shir
Practical Framework for Intellectual Property (IP) Valuation, Mikhail Maiorov and Stefan Spinler
Drafting and Prosecuting a Patent Application, Oliver Edwards
Electronic Systems for U.S. and European Patents, Sarfaraz K. Niazi
Commercializing Inventions Through an Office of Technology Transfer, Alexey Titov
University Patent Case Studies: Some Patents Hang on the Wall, Others Go to Work, Ethel Machi and Peter Machi
What’s Mine is Yours: Navigating Ownership Rights and Bayh-Dole, Peter Machi
Copyright, Melissa Levine and Billie Munro Audia
Nadya Reingand, PhD, teaches short courses on intellectual property (IP), patent search and analysis, reverse engineering, and other topics for various audiences. Her scientific background and experience help her to understand researchers’ needs in intellectual property aspects that arise from the result of scientific work. She holds a PhD in optoelectronics and has authored numerous scientific papers and patents of her own, mostly in the fields of holography, interferometry, speckles, and optical communications. Her legal experience originated from patent analysis and technology overview reports, which she performed at Landon IP, Inc., together with the creation of technology development forecast and IP strategy. Currently, Dr. Reingand is an Intellectual Property Director at CeLight, Inc., responsible for developing and maintaining IP assets of the company. She is licensed to practice Patent Law before the U.S. Patent Office.
"… a complete source of intellectual property (IP) information for academic researchers. The book is a valuable guide to business and market estimation, employment legislation and invention priority estimation. It will become a standard reference for IP issues and help to stimulate interactions between academics and entrepreneurs."
—Optics & Photonics News, January 2013