John P Mc Manus - Intellectual Property: From Creation to Commercialisation: A Practical Guide for Innovators & Researchers
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For many knowledge-intensive or technology-based start-up companies, the professional management of intellectual property (IP) is critically important. In fact, IP may be the main asset by which the value of a young company is determined and on which decisions to invest in the company are based and so IP needs to be considered very early in the planning process. Intellectual Property: From Creation to Commercialisation provides a detailed grounding for innovators and researchers. The book starts with the source of innovation that is, at the point where resourcefulness and creativity combine to develop new opportunities through problem-solving and examines the critical steps that need to be carefully managed in the process surrounding the creation of IP and managing its development from concept through to exploitation. This involves the steps of identifying, capturing and assessing the value of IP. Useful recommendations for managing the transfer of IP from a research environment to the knowledge economy are provided and case studies illustrate pitfalls to watch out for. Readers can expect to gain a broad understanding of IP and the innovation process. Specifically, they will learn: the benefits of implementing procedures to ensure that IP can be protected, managed and exploited effectively; how to assess the most appropriate routes to market, such as licensing or sale of their IP, or establishing a spin-out company to deliver a service or product offering and how to present a viable business case to potential funders and investors.
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Published by OAK TREE PRESS, 19 Rutland Street, Cork, Ireland
www.oaktreepress.com
2012 John P. McManus
A catalogue record of this book is available from the British Library.
ISBN 978 1 78119 024 1 (Hardback)
ISBN 978 1 78119 025 8 (ePub)
ISBN 978 1 78119 026 5 (Kindle)
All rights reserved. No part of this publication may be reproduced or transmitted in any form or by any means, including photocopying, recording or electronically without written permission of the publisher. Such written permission also must be obtained before any part of this publication is stored in a retrieval system of any nature. Requests for permission should be directed to Oak Tree Press, 19 Rutland Street, Cork, Ireland or .
The information contained in this publication is intended for guideline purposes only and does not represent legal advice. Readers should always seek independent legal and/or other professional advice specific to their own requirements before taking any action based on the information provided herein.
ACSTI | Advisory Council for Science, Technology & Innovation |
AIA | America Invents Act of 2011 |
AURIL | Association for University and Industry Links |
BIP | Background intellectual property |
BMS | Bristol Myers Squibb |
CDA | Confidential disclosure agreement |
CDs | Compact discs |
COGS | Cost of goods sold |
CRI | Cancer Research Institute (Australia) |
CRO | Companies registration office |
CTM | Community Trade Mark |
DESCA | Development of a Simplified Consortium Agreement for FP7 |
DNA | Deoxyribonucleic acid |
ECJ | European Court of Justice (Court of Justice of the European Union) |
EGF | Epidermal growth factor |
EGFR | Epidermal growth factor receptor |
EPC | European Patent Convention |
EPO | European Patent Office |
EU | European Union |
EUCAR | European Council for Automotive R&D |
FIP | Foreground intellectual property |
FDA | Food and Drug Administration (US) |
FP7 | Seventh EU Framework Programme |
GDP | Gross domestic product |
GUI | Graphical user interface |
HEI | Higher Education Institution |
ICC | International Chamber of Commerce |
ICSTI | Irish Council for Science, Technology & Innovation |
IDF | Invention disclosure form |
ILO | Industry liaison office |
IMG4 | Industrial Management Group 4 (Aerospace) (FP7) |
IP | Intellectual property |
IPC | International Patent Classification (system) |
IPCA | Integrated Projects Consortium Agreement for FP7 |
IPER | International Preliminary Examination Report |
IPO | Intellectual Property Office (UK) |
IPO | Initial public offering |
IPR | Intellectual property rights |
IT | Information technology |
JIP | Joint intellectual property |
KTO | Knowledge transfer office |
LIMS | Laboratory information management system |
LPs | Long-playing (records) |
mAbs | Monoclonal antibodies |
MTA | Materials transfer agreement |
NDA | Non-disclosure agreement |
OHIM | Office for Harmonization in the Internal Market |
PCT | Patent Cooperation Treaty |
PRO | Public research organisation |
R&D | Research and development |
SOPs | Standard operating procedures |
TRIPS | Agreement on Trade Related Intellectual Property Rights |
TTO | Technology transfer office |
UCC | Universal Copyright Convention |
UK | United Kingdom (of Great Britain and Northern Ireland) |
US | United States (of America) |
USPTO | United States Patent & Trade Mark Office |
UWA | University of Western Australia |
VCs | Venture capital companies |
WCT | WIPO Copyright Treaty |
WIPO | World Intellectual Property Organization |
WP | Work programme |
The idea for this book arose from a postgraduate training module I developed for University College Dublin under the auspices of NovaUCD. The foresight of UCD Graduate School, and Dr. Pat Frain, then Director of NovaUCD, in including a training module on innovation and knowledge transfer in a programme of continuing professional development was an significant step in developing a new skill-set for researchers.
Successful completion and implementation of the module and delivery of sections to a wider audience in several European countries confirmed the international relevance of the material to researchers, SMEs and technology transfer professionals and encouraged me to make this important practical knowledge more widely available in book form.
I greatly acknowledge the support and encouragement of all my colleagues at NovaUCD and the course coordinator, Ms. Caroline Gill, during the development of the training module. I also would like to thank my former employer, Enterprise Ireland, for providing the opportunity to work with NovaUCD on this important project.
I am grateful to patent attorneys, Dr. Maura OConnell of FRKelly for her discussions on due diligence and relevant patent case law, Mr. Cathal Lane of Tomkins for his inputs to the patent system and patent specification and entrepreneur, Dr. Ivan Coulter, CEO of Sigmoid Pharma, for his discussions and contributions to the business plan.
For many knowledge-intensive or technology-based start-up companies, the professional management of intellectual property (IP) is critically important. In fact, IP may be the main asset by which the value of a young company is determined and on which decisions to invest in the company are based. For such companies, IP needs to be considered a priority in the planning process to ensure that it is properly protected and that the company itself is not inadvertently infringing a third partys rights. Also, the proper protection and management of IP is essential for the development of collaborative research agreements and the establishment of long-term strategic partnerships between public research organisations (PROs), such as universities and research centres, and established companies.
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