The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Thursday, 1 June 2017

Book Review: Patents for Technology Transfer

This Kitten is pleased to put her paws on Dr. Ingrid Kelly’s book, Patents for Technology Transfer. Dr. Ingrid Kelly is the Technology Transfer Manager at the University of Vienna and she has more than a decade of experience as a European Patent attorney. The book is a brief, yet practical guide addressed to Technology Transfer Offices (TTOs) managers working at universities and research institutes with little experience in patent law.

Dr. Kelly explains in a concise manner the entire life cycle of a patent, from drafting to prosecution and enforcement. The book is divided into nine chapters. Drafting and prosecution issues are covered from the chapter one until the eight, meanwhile, chapter nine is focused on enforcement.

In the first three chapters, Dr. Kelly discusses the patentability requirements and exclusions established in the TRIPS Agreement, the European Patent Convention, and some relevant case law in the USA. Also, she explains the construction of claims (its meaning and whether the wording is accepted in practice), how to calculate patent terms and the main features of supplementary protection certificates (SPCs). Also, she includes tips for drafting IP policies, how to understand patents as a marketing tool and to negotiate with companies for transferring technology.

Chapter 4, which this Kitten found particularly interesting, covers inventorship and ownership. Dr. Kelly shares her experience regarding contract issues in terms of cooperation between inventors and universities. In addition, she provides some tips about how to manage joint inventions (i.e. institutional co-owners in the form of consortiums), the TTO expenses and the incomes from technology transfers.

Dr. Kelly highlights in chapter 5 the advantages and risks of claiming priority in a patent application. Also, she thoroughly explains the operation of the grace period and the importance of having confidentiality agreements in place between the parties involved in the development of technologies. Meanwhile, in chapter 6, she provides guidance for choosing a patent attorney as well as other tips regarding billing and keeping a TTO’s budget under control, such as instructing a patent attorney to postpone an office action (when it is suitable).

In chapter 7, Dr. Kelly explains the main features of patent searches and examination for assessing the patentability of an invention, as well the common objections to office actions, the acceleration of prosecution (including patent prosecution highway programs) and the importance of the information disclosure statement (IDS) in the USA.

Dr. Kelly explains in chapter 8 the mechanisms for filing patent applications in different countries, namely under the PCT and before the European Patent Office as well as the main features of the EU unitary patent. Also, she provides tips for reviewing a patent portfolio, such as the factors to be taken into account in abandoning a patent and the criteria for patent metrics as applied to statistics reports on technology transfer activities.

Finally, in chapter 9, Dr. Kelly gives an overview of patent enforcement, in which she discusses invalidity and infringement proceedings (including remedies), exemptions and defenses. She also provides an overview of trendy topics such as patent trolls, traditional medicinal knowledge and genetic resources, evergreening and access to medicines.

Patents for Technology Transfer is a useful book for TTOs managers working at universities and research institutes. From a strategic approach, it provides a clear overview of the theory and practice of patent law as well as useful tips for the management of the patent portfolio at TTOs, with the aim to maximize the results derived from technology transfer.

Kelly, Ingrid. Patents for Technology Transfer. CreateSpace Independent Publishing Platform, 2016. ISBN: 978 1 54062 690 5. Paperback, 168 pages. Available here.

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