Research Handbook on Intellectual Property and Technology Transfer


Research Handbook on Intellectual Property and Technology Transfer

9781788116626 Edward Elgar Publishing
Edited by Jacob H. Rooksby, Dean and Professor of Law, Gonzaga University School of Law, Spokane, Washington, US
Publication Date: 2020 ISBN: 978 1 78811 662 6 Extent: 512 pp
Written by leading experts from across the world, this Handbook expertly places intellectual property issues in technology transfer into their historical and political context whilst also exploring and framing the development of these intersecting domains for innovative universities in the present and the future.

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Universities everywhere are increasingly being encouraged to translate their research findings into practical applications that will further the common good through technology transfer, a process in which intellectual property (IP) laws and systems play a central role. This Research Handbook skilfully places IP issues in technology transfer into their historical and political context whilst also exploring and framing the development of these intersecting domains for innovative universities in the present and the future.

Written by leading experts from across the world, this Research Handbook offers new insights into our understanding of this area and its practical implications, situating IP and technology transfer within larger dialogues concerning the future of the research university. It illuminates a complex ecosystem in which the stakes are high and best practices are nuanced. Not overlooked are the most timely and controversial topics in the field, including inter partes review proceedings, conflicts of interest, patent enforcement and the public good, 3D printing, and university treatment of data.

This Research Handbook will prove critical reading for scholars of both technology transfer and IP, as well as for practitioners working in these fields. Stakeholders such as university presidents and governing boards and members of higher education organizations will also find it insightful and useful.
Critical Acclaim
‘Policy makers, scholars, university managers concerned with issues such as conflicts of interest and those concerned with the future potential for collaborative ventures in the industry-commerce field, will be able to find a valuable source of material in the detailed research reflected in this collection.’
– John Hull, European Intellectual Property Review

‘As university technology transfer operations assume increasing responsibility for a broad range of innovation-related activities, this timely and important contribution provides an essential reference guide. Chapters covering both history and current practice establish the still evolving role of technology transfer within the university as a still evolving knowledge enterprise. The emphasis on the innovation economy and the public good firmly situates the book within the modern conception of this critical university function.’
– Michael Crow, Arizona State University, US

‘This Research Handbook is an indispensable guide for understanding current U.S. university technology transfer practices, and the related conflicts and tensions. It provides a fascinating insight into the evolution of technology transfer and the political dynamics among and within universities in the background of the Bayh-Dole Act and the America Invents Act. . . . overall the Research Handbook should be of considerable value both to practitioners and scholars in enhancing their understanding of technology transfer issues and concerns.’
– Robert Hardy, Council on Governmental Relations, US
Contributors: 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


1 Introduction to the Research Handbook on Intellectual Property and
Technology Transfer 1
Jacob H Rooksby

2 University technology transfer structure and intellectual property policies 4
Jennifer Carter-Johnson
3 The politics of university technology transfer 41
Jessica A Sebeok
4 Bayh-Dole beyond patents 69
Shubha Ghosh
5 University as knowledge-based enterprise: organizational design and
technology transfer 92
Jarrett B Warshaw
6 Policy advocacy and organizational change at the Association of
University Technology Managers (AUTM) 131
Christopher S Hayter and Jacob H Rooksby
7 Conflicts of interest and academic research 143
Jorge L Contreras and Marc Daniel Rinehart
8 Modern intellectual property valuation in the academic technology
transfer setting 166
Bryce Pilz

9 The innovation arms race on academic campuses 196
Todd Sherer and Liza Vertinsky
10 Tacit knowledge and university-industry technology transfer 214
Peter Lee
11 Technology transfer and the public good 236
Brian L Frye and Christopher J Ryan, Jr
12 US patent sales by universities and research institutes 256
Brian J Love, Erik Oliver and Michael Costa
13 Intellectual property exchanges and auctions: non-traditional mechanisms
for technology transfer 283
Daniel R Cahoy
14 Currents and crosscurrents in litigation of university and nonprofit
related patents: is there a coming wave of patent litigation involving
those patents? 309
Teo Firpo and Michael S Mireles
15 Is patent enforcement efficient? 324
Mark A Lemley and Robin Feldman
16 Reviewing inter partes review five years in: the view from university
technology transfer offices 339
Cynthia Laury Dahl
17 Data governance and the emerging university 364
Michael J Madison
18 “Free data?”: open science in the age of personal data protection 391
Paolo Guarda

19 A European perspective on intellectual property and technology transfer 412
James A Cunningham, Marco Romano and Melita Nicotra
20 The current state of university technology transfer in China 434
Zhang Chu and Shi Xiaoxue
21 Make and share: intellectual property, higher education, technology
transfer, and 3D printing in a global context 447
Matthew Rimmer

Index 480
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