Technology Transfer Legal Resource Materials

Entrepreneurship Law Editorial Team

Books

David B. Audretsch, Stephan Heblich & Oliver Falck, Handbook of Research on Innovation and Entrepreneurship (2011).

Abstract: This Handbook analyses the foundations, social desirability, institutions and geography of innovation and entrepreneurship. Leading researchers use their outstanding expertise to investigate various aspects in the context of innovation and entrepreneurship such as growth, knowledge production and spillovers, technology transfer, the organization of the firm, industrial policy, financing, small firms and start-ups, and entrepreneurship education as well as the characteristics of the entrepreneur.  

Robert Carr, A Proposal for a Framework for Measuring and Evaluating Technology Transfer from the Federal Laboratories to Industry, in From Lab to Market: Commercialization of Public Sector Technology (Sulieman K. Kassicieh & H. Raymond Radosevich ed., 1994).

CASES ON TECHNOLOGY INNOVATION: ENTREPRENEURIAL SUCCESSES AND PITFALLS (S. Ann Becker & Robert E. Niebuhr, eds. 2010).

Product Description (from publisher):   This book presents cases on theory, research, and practice in the areas of technology transfer, innovation, and commercialization, offering illustrations and examples of entrepreneurial successes and pitfalls in university, industry, government, and international settings.

Suleiman K. Kassicieh & H. Raymond Radosevich, From Lab to Market: Commercialization of Public Sector Technology (1994).

Abstract (from Powell’s): Most derived from a March 1993 conference in Santa Fe, New Mexico, 33 papers by entrepreneurs, academics, and policy makers review issues involved in turning private profit from publicly funded scientific research in government, university, and other laboratories; and advise the ambitious on how to slip the golden egg from one nest to another without riling up the goose. The sections cover the importance of commercialization, the roles of the various participants, mechanisms and processes, and prescriptive paradigms.

Robert E. Litan, Handbook on Law, Innovation & Growth (2011).

Abstract: This Handbook provides breakthrough analyses on an important, cutting-edge topic: the connections between the legal system, both in substance and process, and innovation and growth. Arguably the most important intellectual development in legal scholarship and judicial decision-making over the past four decades has been the increasing use of economic modes of analysis in legal reasoning. The Handbook on Law, Innovation and Growth sheds new light on the linkages between innovation, growth and the legal system, answering questions that will help policymakers better understand and implement the law in an effort to advance economic welfare. This Handbook brings together many prominent scholars to examine the features of the legal infrastructure that affect both innovation and growth. Individual chapters, including “ Why do entrepreneurs patent?” and “National technology transfer mechanisms” explore different legal subject areas, in most cases offering recommendations for rule changes that could accelerate growth, primarily in the context of the US economy. The introductory chapter cohesively ties all of the contributions together and explains why it is time for legal scholarship and research to move in a new direction. Surpassing other literature on the subject, this landmark Handbook is certainly a critical volume for any student or scholar of law and economics.

Articles

Hayden R. Brainard, Survey and Study of Technology Development and Transfer Needs in New York, 9 Alb. L.J. Sci. & Tech. 423 (1999).

Abstract (from author): The Science and Technology Law Center Project was undertaken to identify ways to facilitate the management, development, and transfer of technology from research sites, companies, universities, and entrepreneurs to the marketplace. Business, industry, and government would like to encourage efficient, fast, and less expensive means of transferring technology. However, due to the inefficiency of development and transfer processes, many technologies remain undeveloped. The initial hypothesis of this study is that business and legal difficulties restrict technology development and transfer, and that changes in business and legal culture, through programs and services, may facilitate the development and transfer of technology.

Rochell Cooper Dreyfuss, Fostering Dynamic Innovation, Development and Trade: Intellectual Property as a Case Study in Global Administrative Law, 2009 Acta Juridica 237 (2009).

Abstract:  International intellectual property law furnishes a case study on the need for norms of global governance. In an earlier era, multilateral intellectual property instruments recognized the dynamic nature of information production; under their terms, nations could balance the interests of producers in earning a return from their intellectual investments against the interests of users in accessing new knowledge for both consumptive and productive purposes. Now that IP is part of the WTO trade regime, information streams have been intensely commodified and an emphasis has been placed on raising IP protection to ever-higher levels. While there are traders in the North and in some emerging economies that are reaping rewards from this system, the TRIPS Agreement is operating as a tax on the South and is chilling innovation is the North. Ostensibly, TRIPS permits nations to strike the appropriate local balance between proprietary and access interests. However, because the drafters of TRIPS incompletely theorized the function of exclusive right regimes, WTO adjudicators have had difficulty evaluating challenges to public-regarding legislation and nations have little guidance for enacting TRIPS-compatible law. But TRIPS does include two potential saving graces. It contemplates close cooperation with WIPO, which now administers upward of 20 intellectual property instruments. Furthermore, the Agreement sets up a Council to oversee compliance. The combined expertise of these two entities could be exploited to rectify the deficits in TRIPS. This paper explores the institutional design issues that must be resolved for these institutions to function effectively. These include mechanisms for incorporating WIPO's expertise into the interpretive process, for insuring that WIPO and the Council operate within the scope of authority delegated by WTO members, for controlling forum shopping, and ensuring transparency, competence, and participation. It ends with suggestions for substantive reform to supplement these administrative devices.

Peter Jay, Removing Incentives for Technology Transfer: Medimmune v. Genentech, 5 Buff. Intell. Prop. L.J. 69 (2007).

Abstract (from author): MedImmune v. Genentech changed the landscape for licensors and licensees of patented technology. The decision places an emphasis on coercion in patent licensing negotiations, while attempting to realign the balance of power between licensors and licensees. The realignment, however, shifts the power far back to licensees, leaving licensors with fewer options in the realm of licensing. The realignment also creates barriers to effective and efficient technology transfer. The likely result will be a chilling of licensing practices. This paper proceeds in three parts: Part I summarizes the MedImmune decision; Part II inspects the subsequent decisions by the Court of Appeals for the Federal Circuit ("CAFC") interpreting MedImmune; and Part III examines the impact of these decisions on patent practice.

Andrea L. Johnson, Transborder Licensing: A New Frontier for Job Creation, 13 Tul. J. Tech. & Intell. Prop. 103 (2010).

Abstract: This Article explores why entrepreneurs should consider trans-border licensing as a way to increase markets and create jobs. While transborder licensing can involve both goods and services, this Article focuses on exporting nondefense, non-security-related services and intellectual capital, and it explores how the U.S. government can facilitate the development of an industry of support professionals to help U.S. companies navigate through the regulatory complexities.

Mathew J. Manimala & Devi Vijay, Technology Business Incubators (TBIs): A Perspective for the Emerging Economies (IIM Bangalore, Research Paper No. 358, 2012), available at http://ssrn.com/abstract=2117720.

Abstract (adapted from authors): Technology and entrepreneurship are often reckoned to be the twin-horses pulling national economies towards their developmental destinations. Technology based enterprises (TBEs) are attractive to policy-makers because of their higher potential for job creation and wealth-generation through business growth as well as their lower disappearance rates compared to non-technology based firms. As new technologies are often developed in R&D institutions, it was such institutions in the Western nations that first took the initiative of providing incubation facilities to transfer these new technologies to the market. The model was later used by public and private agencies for facilitating technology development for new ventures. Such initiatives are now known by the common name of Technology Business Incubators (TBIs), some of which are focused on technology transfer and others on technology development for new ventures. Though TBIs are generally considered to be a major facilitator of TBEs, the experience of their effectiveness has been mixed, especially in the emerging economies’ context. It is against the background of such diversity of experiences that the authors have undertaken a comprehensive review of the literature on TBI performance. The findings suggest that, while in the developed countries technology development drives the incubator movement, the process is reversed in developing countries, where the incubator movement is trying to push technology development forward. For this reason the success of TBIs in developing countries would depend largely on the public support available for them. 

Benton C. Martin, The American Models of Technology Transfer: Contextualized Emulation by Developing Countries?, 6 Buff. Intell. Prop. L.J. 104 (2009).

Abstract (from author): The patenting of innovative technology has become an essential part of the U.S. economy, promoted by groundbreaking legislation that allows ownership of technology resulting from research funded by the federal government. Prior to legislation, less than four percent of the tens of thousands of government-funded inventions were licensed to industry, resulting in many technologies failing to reach practical application. Currently, multiple types of research institutions in the United States negotiate an increasing number of licenses every year, resulting in the issuance of more patents and the disclosure of more inventions to technology transfer offices. Even scholars who believe this growth would have occurred eventually without the Bayh-Dole Act (Bayh-Dole) agree that the legislation was important because it “accelerated this growth by clarifying ownership rules, by making these activities bureaucratically easier to administer, and by changing norms toward patenting and licensing at universities.”

Bryce C. Pilz, Student Intellectual Property Issues on the Entrepreneurial Campus (Univ. of Michigan Public Law Research Paper No. 310, 2013) available at http://ssrn.com/abstract=2199592.

Abstract (by author): Intellectual property questions involving student inventions are increasingly common on campuses where the number of bright and motivated students seeking to become the next Mark Zuckerberg are rising. This article addresses why universities should be paying attention to student intellectual property issues, issues related to identifying the owner of intellectual property in student inventions; managing joint ownership between students and the university; and appropriately managing student interactions with third party sponsors of class projects.  Appropriately resolving questions related to intellectual property in student inventions is more important than ever for universities because these questions no longer relate to a mere school project.  Rather, these issues shape the foundations of future for-profit ventures.  For universities seeking the correct and most reasonable answers to questions involving student intellectual property, the stakes have never been higher.

Lorelei Ritchie de Larena, The Price of Progress: Are Universities Adding to the Cost?, 43 Hous. L. Rev. 1373 (2007).

Abstract (from author): Universities have a reputation for being isolated ivory towers, but that is changing as universities become large-scale technology owners. As a result, universities today interface more actively with industry. At the same time, they take a strong role in affirmatively influencing the path of innovation in the United States and globally. Consequently, universities wield enormous power in the controversial economics of intellectual property. This phenomenon is very much due to the passage of a simple technology bill by Congress twenty-five years ago: the Bayh-Dole Act.

Online Resources

Community Financial Resource Center, http://www.cfrcla.org/.

Federal Trade Commission, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy (2003).
http://www.ftc.gov/os/2003/10/innovationrpt.pdf

Standards.gov, National Technology Transfer and Advancement Act (NTTAA)
http://standards.gov/standards_gov/nttaa.cfm

 

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