Guest book review: Research Handbook on Intellectual Property and Technology Transfer

This book review is brought to you by Donal O’Connell, the Managing Director of Chawton Innovation Services, a company focused on IP Education, IP Consultancy and IP Solutions & Tools. He is formerly a VP of R&D and a Director of IP at Nokia and is a Visiting Researcher of IP at Imperial College Business School in London and teach there about 'IP management'. His first book “Inside the Patent Factory” was published by Wiley & Sons in 2008, and second book “Harvesting External Innovation” was published by Gower Publishing in 2011. He also has over 200 short papers on various aspects of IP published. Since 2013, Donal has been included into the IAM 300 (the world's leading IP Strategists) an annual listing of those individuals identified as offering operating companies and other IP owners world-class advice on maximising the value of their intellectual property. 

Here is what he has to say about Research Handbook on Intellectual Property and Technology Transfer, edited by Jacob H. Rooksby, Dean and Professor of Law, Gonzaga University School of Law, Spokane, Washington, USA:

Overview of the book

The book was written by a variety of leading experts from around the world. It places intellectual property issues in technology transfer into their historical and political context whilst also exploring the development of these intersecting domains for innovative research universities.

 

Universities are increasingly being encouraged to translate their research output into practical applications that will further the common good and benefit society through the technology transfer process in which intellectual property plays a crucial role.

The book offers great insights into this area and its practical implications. It explores how IP underpins technology transfer. It breaks down this complex issue very well, highlighting best practices.

The book also brings in various associated topics such as the inter partes review proceedings at the USPTO, the handling of conflicts of interest, patent enforcement from a university perspective, the benefits to society of the patent system, the university treatment of data plus much more.

I suggest that this book will prove critical reading for scholars as well as practitioners of both university technology transfer as well as of IP. Key stakeholders such as university presidents and governing boards and members of higher education organisations will of course also find it insightful and useful. Various entities within the IP sector should also greatly benefit from reading this book such as any IP Law Firms, IP Service Providers and IP Solutions Providers supporting university TTOs. In-house IP professional in industry may also find this book of interest and of value, particularly if their company is collaborating with any universities in the areas of innovation and creativity as it is always good to ‘step into the shoes’ of the party across the table from you.

Contributors to the book

D.R. Cahoy, J. Carter-Johnson, Z. Chu, J.L. Contreras, M. Costa, J.A. Cunningham, C.L. Dahl, R. Feldman, T. Firpo, B.L. Frye, S. Ghosh, P. Guarda, C.S. Hayter, P. Lee, M.A. Lemley, B.J. Love, M.J. Madison, M.S. Mireles, M. Nicotra, E. Oliver, B. Pilz, M. Rimmer, M.D. Rinehart, M. Romano, J.H. Rooksby, C.J. Ryan, J.A. Sebeok, T. Sherer, L. Vertinsky, J.B. Warshaw, S. Xiaoxue

Chapters of the book

Chapters 1 is an introduction to the Research Handbook on Intellectual Property and Technology Transfer by Jacob Rooksby.

PART I TECHNOLOGY TRANSFER COMES OF AGE: POLICIES, PRACTICES AND POLITICS

Chapter 2 titled “University technology transfer structure and intellectual property policies” by Jennifer Carter-Johnson focuses on the various methods that universities utilise to exploit the innovation and creative of their research community. It also explores the organisational structures and modes of operation of university technology transfer offices.

In Chapter 3, Jessica Seboek explores the politics of university technology transfer, and the way that universities have engaged in the development of laws and policies relating to technology transfer. Research universities have a long history of participation in the US state and federal legislative and regulatory processes, and this is explored in this chapter.

The 1990 Bayh-Dole Act was a major milestone for intellectual property management in US universities. This chapter by Shubha Ghosh looks beyond the Bayh-Dole Act and examines IP Management by universities with a focus on university IP polices, how universities handle the overlap between different IP regimes, and university branding. It also covers references studies by the Association of University Technology Management.  

Chapter 5 titled “University as knowledge-based enterprise: organizational design and technology transfer” by Jarrett Warshaw looks at how universities organise themselves to best support innovation and delves into academic structures, centres and institutes, interdisciplinary schools, academic departments, and affiliated non-profit organisations.

The Association of University Technology Managers (AUTM) features in Chapter 6 by Christopher Hayter and Jacob Rooksby. This chapter focuses on the organisation development of AUTM as well as its policy developments and its advocacy work for its members.

Chapter 7 titled ‘Conflicts of interest and academic research’ by Jorge Contreras and Marc Daniel Rinehart examines some of the controversies often linked to the influence that corporate funders may exert over academic research. It also delves into the various types of conflict of interest that may arise. 

We then change direction with Chapter 8 ‘Modern intellectual property valuation in the academic technology transfer setting’ by Bryce Pilz focusing on the topic of IP valuation and valuation methodologies. This chapter also delves in detail into university technology transfer deal types and deal structures.

PART II INTELLECTUAL PROPERTY AND TECHNOLOGY TRANSFER IN THE INNOVATIVE UNIVERSITY

In Chapter 9 ‘The innovation arms race on academic campuses’ by Todd Sherer and Liza Vertinsky, the pressures on universities to demonstrate the conversion of IP value into economic value are explored together with details on how some universities have responded to these pressures by expanding beyond their traditional approaches to take on new innovation and entrepreneurship initiatives.

Chapter 10 titled ‘Tacit knowledge and university-industry technology transfer’ by Peter Lee highlights the fact that effective technology transfer oftentimes requires significant knowledge exchange between the academic and commercial entities in parallel to any patent licensing. This chapter explores the nature of tacit knowledge and the mechanisms for transferring it from one entity to another as well as some of the challenges posed.

Chapter 11 ‘Technology transfer and the public good’ by Brian Frye and Christopher Ryan looks at the issue of the public good or the benefits to society of a university’s patent activities and its technology transfer business. It argues that there is some misalignment between technology transfer and the public good at present but that there are some changes which if implemented could re-align the two. 

The sale of patents by universities and research institutions is explored in Chapter 12 by Brian Love, Erik Oliver and Michael Costa. They also delve into the various ways and means in which such sales take place. This chapter is also springled with some great facts and figures about such sales.

In Chapter 13 titled ‘Intellectual property exchanges and auctions: non-traditional mechanisms for technology transfer’, Daniel Cahoy describes newly emerging mechanisms that support technology transfer and provides insights on how to assess these. This chapter looks at patent exchanges, brokerages, marketplaces, aggregators, and auction houses. 

The issue of patent litigation is explored in Chapter 14 ‘Currents and crosscurrents in litigation of university and non-profit related patents: is there a coming wave of patent litigation involving those patents?’ by Teo Firpo and Michael S Mireles. It sets forth data concerning patent enforcement of patents by universities and their licensees and assignees.

Chapter 15 titled ‘Is patent enforcement efficient?’ by Mark Lemley and Robin Feldman builds on the previous chapter, assesses whether such lawsuits are efficient and works to determine under what circumstances such lawsuits benefit the university and society in general. An interest section at the end of this chapter explores the issues of independent invention by a third party and prior user rights.   

We have witnessed major patent reform in the USA in recent times. Chapter 16 titled ‘Reviewing inter partes review five years in: the view from university technology transfer offices’ by Cynthia Laury Dahl looks at ‘inter partes reviews’ from a university technology transfer perspective, looking at whether it has impacted their patent filing strategies, patent licensing strategies, and patent enforcement strategies.

Data is clearly becoming more central to university research, and  this has implications for its IP policies, IP strategies and technology transfer activities. Chapter 17 titled ‘Data governance and the emerging university’ by Michael Madison explores this topic. It highlights the challenges universities face between closed approaches, proprietary practices and private interest versus openness, sharing and the pubic good when it comes to data. 

Chapter 18 titled “Free data?”: open science in the age of personal data protection’ by Paolo Guarda follows on naturally from the previous chapter and delves into such topics Open Access, Open Data, Open Source Software. The chapters highlights the role of IP with these different models. Interestingly, the EU’s Horizon 2020 program is referenced with particular focus on its approach  to open data.

PART III GLOBAL PERSPECTIVES ON INTELLECTUAL PROPERTY AND TECHNOLOGY TRANSFER

James Cunningham, Marco Romano and Melita Nicotra provide a European perspective on intellectual property and technology transfer in Chapter 19, highlighting some of the institutional, cultural, and technological differences between Europe and the US as well as within Europe. The Unitary Patent Court is briefly discussed at the end of this chapter.

The current state of university technology transfer in China is explored in Chapter 20 by Zhang Chu and Shi Xiaoxue. It starts by examining the recent array of policies and regulations introduced at a state level. It then highlights some success stories before then exploring some of the challenges that exist. 

Look no further
Image: Achim

In the last Chapter ‘Make and share: intellectual property, higher education, technology transfer, and 3D printing in a global context’ by Matthew Rimmer, the reader is presented with a case study that delves into the detail of 3D printing from a university and technology transfer perspective. It considers the relationship between IP, technology transfer and higher education in the context of 3D printing, additive manufacturing and the Maker Movement. 

My overall thoughts on the book:

I thoroughly enjoyed reading this book and found it informative and educational. I wish that this book had been available two or three years ago prior to me conducting some university IP related projects here in the UK, as it would have been of great benefit to me and my colleagues working on those projects.

Even though the book focuses on intellectual property and technology transfer, it does delve into some interesting and related topics, such as ...

• A historical perspective about academia and IP

• Tacit knowledge by researchers

• IP spin out companies

• IP exchanges and marketplaces

• Recent patent reform in the US

• Data and data governance by universities

Admittedly the book is very USA focused but still very enjoyable. It helped that I had lived in the US for many years, so I found specific US information easy to understand and digest. That said, there are a few Chapters towards the end of the book which look outside of the USA.

The book is sprinkled with facts and figures and references which makes it a really treasure trove.

Even though different people have written the different chapters of the book, the book flows very well. I kept forgetting that the book involves multiple contributors. Well done to whoever pulled the different chapters together and made it have a consistent style and tone.

If the editor and contributors ever plan an update to this book, then I would suggest some additional chapters to be included there, such as …

• Open-source software, as this is an IP model that originated in academia and is now one of the most popular IP models in existence

• The commercialisation of software by university technology transfer offices, as software is eating the world

• The role of trade secrets within innovative research universities, given the recent developments in trade secret legislation in some key jurisdictions, and the problems with trade secret misappropriation

• IP education and training at innovative research universities, as recent research suggests that IP education in general is facing some challenges.

In summary, I would highly recommend this book.

Details:

Publication Date: 2020 

ISBN: 978 1 78811 662 6

Extent: 512 pp

Hardback £190 from Edward Elgar

Also available as an ebook

eISBN: 978 1 78811 663 3