1st Edition

Nanotechnology Commercialization for Managers and Scientists

Edited By Wim Helwegen, Luca Escoffier Copyright 2012
    440 Pages 13 Color & 5 B/W Illustrations
    by Jenny Stanford Publishing

    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.

    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


    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.