Nanotechnology Commercialization for Managers and Scientists  book cover
1st Edition

Nanotechnology Commercialization for Managers and Scientists

ISBN 9789814316224
Published February 9, 2012 by Jenny Stanford Publishing
300 Pages 13 Color & 5 B/W Illustrations

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Book Description

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

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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.