Nanotechnology Commercialization for Managers and Scientists: 1st Edition (Hardback) book cover

Nanotechnology Commercialization for Managers and Scientists

1st Edition

Edited by Wim Helwegen, Luca Escoffier

Jenny Stanford Publishing

300 pages | 13 Color Illus. | 5 B/W Illus.

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Hardback: 9789814316224
pub: 2012-02-09
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The nanotechnology industry is a fast growing industry with many unique characteristics. When bringing the results of nanotechnology research to the market, companies and universities run into unforeseen problems related to intellectual property rights and other legal and regulatory issues. An effective commercialization of the results of research requires basic knowledge of the relevant issues and a well-defined strategy, while the absence of such knowledge and strategy can be detrimental to the commercial potential of any invention. Even the most impressive scientific achievements can become a commercial failure due to a lack of understanding and strategy relating to the legal and regulatory issues surrounding the commercialization of a technology.

With contributions from twenty experts in the field, Nanotechnology Commercialization for Managers and Scientists discusses the most relevant issues that a company or university will face when bringing a nanotechnology invention to the market. A large part of the book will be dedicated to the obtainment, strategic use, valuation and licensing of patents. Further chapters will deal with e.g. investment, university-industry collaboration, environment health and safety, etc. In this way managers and scientists at universities and companies are provided with a handbook that provides them with industry specific basic knowledge of issues that they are unfamiliar with but is essential to the commercial success of their inventions.

Table of Contents

Introduction to theWorld of Nanotechnology, Rachel M. Buchanan, Christine A. Smid, and Ennio Tasciotti

History and Definition

Fabrication and Characterization

Current and Future Applications

Overview of Intellectual Property Rights, Wim Helwegen and Luca Escoffier


Other Forms of Intellectual Property

Trade Secrets

Nanotechnology Patent Procurement and Litigation in Europe, Hanna R. Laur´en

Obtaining Patent Protection in Europe

Post-Grant Proceedings for a European Patent

Patentability of Nanotechnology in Europe

Drafting a European Patent Application

Nanotechnology Patent Procurement and Litigation in the United States, Sarah M. Rouse

Patent Procurement for Nanotechnology-Based Inventions: US Perspective

The US Patent System

US Patent Post-Grant Proceedings

US Patent Reform

Patentability of Nanotechnology in the United States

How to Set Up an Effective IP Strategy and Manage a Nanotechnology-Based Patent Portfolio, Pekka Valkonen

Strategy: Why It’s Ambiguous

Pros and Cons of Patents

IPR Strategies in the Literature

Appropriability of Patents

Appropriability of Patents in Nanotechnology

IPR Policy: Implementing Strategy from the Bottom Up

IPR Policy: Some Practical Measures


How to Identify Patent Infringements in the Nanotechnology Sector, Marco Spadaro


The Laws

The United States of America and Europe

Exclusive Rights and Infringement

The Product and the Claims

Recognizing Infringement

Infringing Nanotechnology

Determining Infringement in Nanotechnology

Am I (Patent Owner) an Infringer?

Different Kinds of Infringement

Court Decision: United States of America (Kumar)

Court Decision: Europe (Germany)

Specific Problems in Nanotechology


Licensing Issues in Nanotechnology, Joanna T. Brougher


Reasons for Entering into License Agreements

Overview of Intellectual Property Licensing

Potential Issues in Nanotechnology Licensing

International Issues Surrounding Nanotechnology Licensing


IP Valuation: Principles and Applications in the Nanotechnology Industry, Efrat Kasznik

Overview of IP Valuation

The Application of IP Valuation in the Nanotechnology Industry

Investing in Nanotechnology, Po ChiWu

The Nanotech Challenge

How Investors Think About Nanotechnology

Current State of Investment in Nanotechnology

The Venture Biosphere

Fundamentals of The Venture Capital Process: Advice to Entrepreneurs

How to Raise Money from Venture Capital Firms

Technology Transfer and Nanomedicine with Special Reference to Sweden, Claes Post


Technology Transfer


Nanotech Case Studies


Public-Private Partnerships—an Example from the Netherlands: The Industrial Partnership Programme, Pieter de Witte


Description of the Industrial Partnership Programme

Experiences and Results

Conclusions and Outlook

University and Employees’ Inventions in Europe and the United States, Niklas Bruun and Michael B. Landau

Employee Inventions in Europe

University Ownership as a General Rule

Researcher Ownership Through "Professor’s Privilege"

Hybrid Systems: Ownership Regulated and Balanced Through Special Legislation


The US Perspective

University Ownership is the General Rule in the United States As Well

Experimental use in the United States

Government Ownership of Inventions in the United States

Industry May Have a License in Certain Circumstances


Nanotechnology: Some Final Reflections

Environment, Health, and Safety Within the Nanotechnology Industry, Kaarle H¨ ameri


Exposure to Nanoparticles

Environmental Fate

Health Effects and Human Toxicity

Risk Assessment

Regulatory Issues

Standardization Activities

Regulation of Nanomaterials in the EU, Bärbel R. Dorbeck-Jung


Regulatory Structure and Policy

Overview of Hard and Soft Regulation

Cross-Cutting Regulatory Issues

Regulation of Nanoproducts in Specific Areas


Nanomaterial Regulation in the United States, Michael E. Heintz

Nanomaterial Regulation in the United States

Federal Regulation of Nanomaterials

Insurance Concerns with Nanomaterials

State and Local Regulation of Nanomaterials



About the Editors

Wim Helwegen holds a Master of Laws degree in international and European law from Tilburg University in the Netherlands. He is specialized in the interaction of patent law and advanced technologies, such as nanotechnology and biotechnology. After having worked at a Court of Appeals in the Netherlands, Wim conducted postgraduate research at the Queen Mary Intellectual Property Research Institute at Queen Mary University of London. In 2007, he was appointed as a researcher at the IPR University Center in Helsinki. Currently, Wim is preparing a doctoral dissertation on the patenting of nanotechnology at the University of Helsinki. In addition, he is a lecturer in patent law at Hanken School of Economics.

Luca Escoffier graduated in law from the University of Parma, Italy, in 2001. He earned a Master of Laws in IP in 2003 (WIPO/University of Turin), interned at WIPO, and worked as an IP counsel for a nanobiotech company in Italy until 2008. He then moved to Seattle to work at the University of Washington as a visiting scholar and then as a visiting lecturer. Luca was one of the four experts selected in 2009 as Fellows at the Institute of Intellectual Property in Tokyo. He was one of the 80 students from Singularity University (in 2010) chosen from a pool of 1600 applicants to spend 10 weeks at the campus of NASA Ames in Mountain View. He is a Fellow of the Stanford-Vienna Transatlantic Technology Forum, and from May 2010 the founder and CEO of Usque Ad Sidera LLC. Luca is about to submit his PhD dissertation about nanotechnology patenting and valuation.

Subject Categories

BISAC Subject Codes/Headings:
BUSINESS & ECONOMICS / Management Science
SCIENCE / Life Sciences / General