MANAGING INTELLECTUAL PROPERTY

COMMERCIALISING INTELLECTUAL PROPERTY SERIES #3

John P. Mc Manus

Published by NuBooks, an imprint of Oak Tree Press, 19 Rutland Street, Cork, Ireland

www.oaktreepress.com

ISBN: 978-1-84621-134-8 (PDF)
ISBN: 978-1-84621-135-5 (ePub)
ISBN: 978-1-84621-136-2 (Kindle)

© 2012 Dr. John P. Mc Manus.

All rights reserved. This eBook may not be reprinted or distributed in electronic, print, web or other format without express written permission.

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.

Extracted from INTELLECTUAL PROPERTY: FROM CREATION TO COMMERCIALISATION – A Practical Guide for Innovators & Researchers, by Dr. John P. Mc Manus, published by Oak Tree Press.

1: INTRODUCTION

It is essential that those involved in extracting value from their research activities and those who are engaged in the business of technology development for commercial applications establish as early as possible in their immediate work environment appropriate systems for developing and managing IP that are compatible with the needs of industry, the investment community and company start-ups engaging in the exploitation of innovative technologies based on intellectual property (IP) portfolios.

Most business opportunities that involve collaborative research with public research organisation (PROs) such as universities, institutes, research centres, etc., and are dependent on access to IP to establish and support a business activity, typically require the following steps, either in setting up a new company, or in bringing a technology or product to market by an existing company:

• Developing IP at a PRO;
• Transfer of the IP to an industrial setting;
• Refinement and improvement of the IP for a specific industry application;
• Seeking financial support from the investment community; and
• Protecting the field of application and market opportunity against competition.

To ensure success at each step in this chain of events, it is vital to have absolute confidence in the fundamental integrity of the IP, which ultimately underpins the final commercial application on which a business is based.

This confidence in the integrity of the IP relates back to the process used to create the IP and the legal safeguards that have been adopted to ensure a valid record of protection and ownership. In essence, a company commercialising a technology needs to ensure that there has been an environment of ‘good practice’ surrounding the whole development of the IP.