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Nicol, Dianne; Le Goy, Christie --- "Book Review - Intellectual Property Commercialisation - A Business Manager's Companion" [2002] JlLawInfoSci 8; (2002) 13(1) Journal of Law, Information and Science 128

Intellectual Property Commercialisation – A Business Manager’s Companion

Paul McGinness

Sydney: LexisNexis Butterworths; 2003 ISBN 0 409 31900 7

480 pgs, Aus RRP $130.00

This book addresses the complex issues associated with ownership and management of intellectual property, transfer of technology, business structuring and financing and many of the other concerns associated with intellectual property commercialisation from the Australian perspective. I cannot speak too highly of it. In the 407 pages of text the book provides a comprehensive account of the relevant areas, ranging from brand management to taxation, franchising and beyond. The book also includes five useful appendices providing tables on such issues as risk and risk management, government funding programs, company structures and commercialisation vehicles.

This book aims to be a ‘friend’ to entrepreneurs or business managers, alerting them to the variety and complexity of issues that arise ‘during the journey of commercialisation of IP’ (at xiii). In my view it offers much more than this. Indeed, it could well become the bible of many technology transfer, commercialisation, business, and intellectual property offices around the country. Each chapter is loaded with information. The author is to be congratulated in being able to synthesise the vast body of material that is available in this area and reduce it to a series of short chapters, each of which offers useful practical information. Many authors, in attempting to be both comprehensive and succinct, would have produced a dense document, each sentence loaded with meaning(s). In this case the author has avoided this trap, producing a book that is accurate, informative and easy to read.

In my view, the book could easily be of value in areas outside the strict confines of business entrepreneurship. Students in law, commerce, management, and policy may all find it useful. I have already used it as a recommended reading in my Biotechnology Law elective. Unfortunately, however, the price of AU$130 is likely to be prohibitive for most students and university libraries. Bearing this in mind, I would encourage the author to consider producing a book along the same lines for student use.

The book is divided into seven parts. The first six parts provide a logical flow starting from intellectual property fundamentals, moving to management issues, attracting funding, preparing for commercialisation deals, commercialisation options and financial issues. The reader will find it easy to track through the book and find relevant content. The only part that I found a little confusing was Chapter 19 on Other Technology Transfer Issues. For some reason the author has put assignment and transfer of biological material together here. To me, these two topics do not hang together particularly well. It may have been useful to provide a separate chapter discussing some of the issues specific to biotechnology, including material transfer agreements.

The seventh and final part of the book is termed Specific Issues and has one chapter dealing with public sector issues. If I have one criticism of the book it would be in relation to this area of public sector issues. Although my knowledge and experience in is the area of medical biotechnology, some of the issues I raise here could be extrapolated to other areas of science and technology. The medical biotechnology sector in Australia is heavily reliant on transfer of technology from the public sector. One of the dominant features of the structure of this industry is a complex web of collaborative arrangements between the public and private sectors. Public sector technology transfer offices play a crucial role in establishing and maintaining these arrangements.

Hence, I think that the author could perhaps have directed a little more attention to the specific issues associated with public sector intellectual property management and with technology transfer from the public to the private sector. In chapter 1, he could have addressed the distinction between intellectual capital and intellectual property, and between informal and formal intellectual property. It might also have been useful to have some in depth discussion of exemptions from infringement, including the research or experimental use exemption from patent infringement and the fair dealing exemptions from copyright infringement. Ownership is another particularly complex issue in public sector organisations and may have warranted more detailed coverage. I do realise that the intended target readership of this book was more at the entrepreneurial end than at the bench scientist end of the commercialisation continuum. The author might like to consider expanding his analysis of public sector issues in the second edition of this book.

As with the content of the book, the format is also user-friendly. The headings and sub-headings are well chosen and organised. The author has included many tables, which provide useful overviews of the issues. Occasionally the headings used in the tables are a little difficult to follow. For example, I had to study the headings used in the patent register analysis table on page 75 for some time before realising exactly what they meant. I didn’t particularly like the bold lines separating the columns in the tables, or the bold first letters in the main text headings. However, these are minor, pedantic concerns. I particularly linked the quotes at the start of each of the chapters. I’m sure that the author had great fun in selecting them.

In conclusion, this is a fine book, filling a cavernous gap in the literature. The author clearly has a wealth of experience in the area and is capable of communicating this experience in a practical and helpful way. Would that all lawyers could adopt similar styles of communication! I look forward to his future writings in the area.

Reviewed by Dianne Nicol, Law Faculty, University of Tasmania, Private Bag 89, Hobart, TAS 7001

A Lay Persons Perspective

You asked me for my impressions of Intellectual Property Commercialisation - a Business Manager's Companion. I mentioned that I had been contemplating writing to Paul McGinness to thank him for it, so here's killing two birds with one stone:

As a novice in the field of IP management, I was conscious of the need to become an intelligent and informed consumer of specialist IP expertise. I rang a firm of patent attorneys at random to ask their advice on how to achieve this efficiently. The firm happened to be Minter Ellison, and although I was slightly cynical at being recommended a book by one of their own partners I ordered it.

As soon as I opened it, I felt I had found exactly what I needed. The preface clearly indicates what the book sets out to achieve and how it does so. The structure of the book makes the content accessible and digestible, and offers many alternate avenues into the detailed text.

Before commencing on the body of the text, the three tables (abbreviations, cases and statutes) indicate reassuringly that this is an Australian publication with relevant international content. Similarly, the appendices offer some extremely useful summaries for the Australian context.

The content is clear and relevant. Paul McGinness’ writing style is unaffected and straightforward; he speaks directly to the business reader, and offers a route to further in-depth exploration both through effective internal cross referencing and through reading lists at the end of each chapter. The anecdotes and references to cases that illustrate the material help greatly in retention, and in building up a feeling of familiarity with the field. Almost every chapter includes checklists that encapsulate principles into a practical and immediately useful form.

The book's structure gives me the same feeling of pleasure I get when fiddling with beautifully made furniture in expensive modern craft shops - the drawers glide in and out silently and smoothly, and the joints are perfect. Everything about this book pleases in the same way - there is a seemingly effortless attention to the reader's comfort in navigating the material.

I'm happy to recommend this book without hesitation. And to Paul, who has never heard of me, thank you so much for fulfilling an important need so brilliantly.

Reviewed by Christie le Goy, Commercial Development Manager, Antarctic Climate & Ecosystems Cooperative Research Centre, Private Bag 80, Hobart, Tas 7001


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