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U of California battling Harvard and MIT over lucrative CRISPR-Cas9 patents


By David Schwartz
Published: April 22nd, 2015

The University of California (UC) has asked the U.S. Patent & Trademark Office (USPTO) to reconsider who was first to invent a hugely valuable gene-editing tool called CRISPR-Cas9, currently credited to the MIT/Harvard Broad Institute in Cambridge, MA.

A potentially billion-dollar, likely Nobel-winning technology, CRISPR is able to cut and replace DNA in an organism’s genome with remarkable precision and ease. The method is revolutionizing the study of all kinds of species, from mice to potatoes, and is likely to lead to advancements in gene therapy to treat human disease.

USPTO issued ten patents to the MIT/Harvard Broad Institute concerning the CRISPR technology, but now UC is claiming the rights belong to them. If the patent office approves UC’s request for an interference proceeding, it will result in a winner-take-all scenario in which either the Broad Institute or UC and two co-petitioners, including the University of Vienna, will come away with all the rights to CRISPR, leaving the opposing party with nothing.

“Expect this battle to be very expensive, very contentious, given the stakes involved,” says Greg Aharonian, director of the Center for Global Patent Quality, which works on patent law issues. “I can see many hundreds of thousands of dollars being spent.”

Although the technology was publicly described in Science by UC biologist Jennifer Doudna and microbiologist Emmanuelle Charpentier in 2012, Broad Institute scientist Feng Zhang was first to win a patent on CRISPR after submitting his lab notebooks, which he says prove he invented the method.

Under the USPTO’s current “first to file” patenting policy, Doudna and Charpentier would seem to have won, given that their application is dated seven months before Zhang’s. However, because of the dates of the discoveries, the case is being viewed under the older “first to invent” rules, where whoever is able to show they were first to make the invention work, or simply conceive of it, gets the patent.

The universities have more than the patent or the money to lose because of the case; if products or treatments based on CRISPR are delayed, the legal battle could end up reflecting poorly on the schools, which all used public tax dollars or philanthropic gifts to develop the inventions. In addition, not only does a Nobel Prize for gene editing seem likely, but several well funded start-ups have been created to start developing gene-therapy treatments. Zhang is involved in Editas Medicine, Doudna’s start-up is called Caribou Biosciences, and Charpentier is a founder of CRISPR Therapeutics.

While other technology disputes have resulted in cross-licensing or the creation of patent pools that offer wide access to basic inventions, these scenarios are unlikely concerning CRISPR since it’s unclear who really owns the key rights.

“It would be mutually beneficial to develop as many products as possible with the technology, because it’s the products that will generate the revenue,” says Dan Voytas, a gene-editing researcher at the University of Minnesota. “With CRISPR, it’s still anyone’s guess how it’s going to work out.”

Source: MIT Technology Review

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Webinar tomorrow: How to find new licensees with the Nearshot Commercialization Model


By David Schwartz
Published: April 22nd, 2015

When it comes to finding licensees, the mainstream market players may seem to be your best bet. But that’s not necessarily the case if your innovations are too similar to their existing product lines. Established companies often see these licensing opportunities as a cannibalism of their current market share.

Veteran tech transfer exec Lee M. Taylor, MBA, JD, has had considerable success by identifying licensees on the periphery of a primary market, focusing on smaller companies willing to take bigger risks to get a foot in the door. The strategy has worked so well, in fact, he’s mapped out the process into what he calls the “Nearshot Commercialization Model.” Technology Transfer Tactics has partnered with Taylor to lead this cutting-edge webinar that promises to expand your prospect list and get more licensing deals signed: Nearshot Commercialization Model: Tapping “Adjacent Market” Veins to Successfully Commercialize University IP.

The programs will be held tomorrow, April 23rd, but it’s not too late to register. For complete details and to enroll, CLICK HERE.

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Bipartisan legislation aims to restore grace period after public disclosure


By David Schwartz
Published: April 22nd, 2015

A group of U.S. Senators and Representatives has introduced bipartisan legislation to restore the one-year “grace period” protecting the intellectual property of inventors who publicly disclose their innovations before filing a patent application. continue reading »

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Streamlined approach to faculty start-ups eliminates haggling, up-front expenses


By David Schwartz
Published: April 22nd, 2015

A top-tier university in terms of research productivity should be brimming with opportunities for innovation and entrepreneurship, but bureaucracy and other obstacles can certainly get in the way, and that is precisely what has been going on at Washington University in St. Louis (WUSTL) in recent years, according to Michael Kinch, WUSTL’s new associate vice chancellor and director of the university’s Center for Research Innovation in Business.

“There is an obvious and clear disparity, and what became clear to me … is that university faculty were so successful in getting grants that they didn’t really need to do anything else,” explains Kinch, who came to WUSTL from Yale eight months ago. “And with the grant funding situation the way it is, that is a pretty precarious situation to be in.”

However, now there is a big push to correct the problem, and one of the university’s first moves on this front is a new “Quick Start” licensing process designed to give faculty entrepreneurs every opportunity

to focus on developing their technologies rather than license negotiations or fees.

With St. Louis among the fastest growing tech hubs in the U.S., Kinch suggests that WUSTL is virgin territory right now for investors and licensing partners. “The last thing they need is an arcane infrastructure that is going to slow this thing down or sometimes kill it altogether,” he says. “That is where Quick Start comes in.”

Leena Prabhu, the business development director in the Office of Technology Management (OTM) at WUSTL, was instrumental in getting the Quick Start license up and running in February of this year. “We were spending a lot of time trying to negotiate the term sheets [for faculty-generated start-ups],” she explains. There was a good deal of negotiation around upfront payments and milestones that tended to slow and complicate the process, she observes. “So the basis for the Quick Start license was to come up with one flat low rate, and have a back-end loaded deal structure — something that both parties would find reasonable,” says Prabhu.

With the new Quick Start agreement, “there are no up-front fees because most of our start-ups do not have cash resources, and they would much rather put the money toward trying to get the in-licensed technology up and running instead of paying it to WUSTL.”

As part of this process, all past patent expenses are waived completely, notes Prabhu. “This is what I think differentiates WUSTL’s start-up license from other licenses,” she says. “Once the agreement is executed, going forward any ongoing patent costs are paid by the start-up, but not the past patent expenses.”

The new approach is also designed to replace what had been a messy, unpredictable process with a straightforward, transparent deal. “The issue we were having is that from the time we began negotiations, parties would go back and forth, and then we would have the PIs jumping into it. It would take a long time — at least three to four months,” says Prabhu. “We thought one way to get around that was to have a low patent royalty rate, which is what companies are happy with.”

At the same time, in order to protect WUSTL’s interests, Prabhu explains, there is a success fee if a start-up has a successful exit at the back end of the deal. “Then we get a certain percentage of the closed valuation of the company,” she explains. Specifically, the university’s take when a company is acquired or has an initial public offering (IPO) is 0.95% of the total amount. Further, under the Quick Start agreement, the university is entitled to 2% of royalties from any future product sales. A detailed article on the Quick Start license appears in the April issue of Technology Transfer Tactics. To begina a subscription and access the full article, along with hundreds of other case studies and best practices in our online archive, CLICK HERE.

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Wayne State start-up develops novel treatment to cure blindness


By David Schwartz
Published: April 22nd, 2015

A Wayne State University (WSU) start-up has developed a breakthrough approach to restore vision using a light-sensitive protein from green algae. continue reading »

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Mobile Apps: Create a new revenue stream and faculty service for your TTO


By David Schwartz
Published: April 22nd, 2015

The explosion in sales of smart phones and tablets has given rise to a market for mobile apps that forecasters predict will exceed $25 billion this year. For university TTOs, this presents a tremendous opportunity for new revenues as well as new relationships with the hundreds of students and faculty creating apps on campus. But the fast-moving mobile app market is also riddled with legal issues that can derail your efforts and lead to time-consuming, costly litigation.

To help you exploit this opportunity as well as avoid common and costly mistakes along the way, Technology Transfer Tactics’ Distance Learning Division has created the two-session Mobile Apps Distance Learning Package, available on DVD and on-demand video.

Our expert presenters will help you tap into this growing trend, enhance TTO revenue, and better serve your student and researcher app developers. The two sessions include 2½ hours of solid advice and actionable takeaways, along with more than 25 pages of program materials created by the session leaders.

For complete details and to order, CLICK HERE >>

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U of Wisconsin start-up commercializing device that draws blood almost painlessly


By David Schwartz
Published: April 22nd, 2015

A start-up from the University of Wisconsin (UW)-Madison is developing a device that can draw a nearly painless blood sample when held against the skin for two minutes. continue reading »

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Incubator teams with Lynn University to launch hands-on entrepreneurship degree program


By David Schwartz
Published: April 22nd, 2015

Watson University, a nonprofit start-up incubator located in Boulder, CO, that focuses on socially-minded companies, is partnering with Lynn University in Boca Raton, FL, to launch a two-and-a-half year bachelor’s degree program in entrepreneurship. continue reading »

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Comings and goings


By David Schwartz
Published: April 22nd, 2015

  Rathindra Bose has announced he is stepping down from his role as vice chancellor and vice president for research and technology transfer at the University of Houston (UH). Under Bose’s leadership, the university has seen a 50% increase in research proposal submissions, with royalty incomes adding up to around $22 million a year, according to UH president and chancellor Renu Khator. “I am grateful for the tremendous strides Dr. Bose has made in his four years at the University of Houston,” says Khator. “Under his leadership, research has become a differentiator for the university, allowing us to earn a place on the list of national Tier One universities.” Bose is scheduled to leave September 1st, after which he will take a full-time faculty position in the department of chemistry. Ramanan Krishnamoorti will serve as acting vice chancellor and vice president for research and tech transfer at UH until a replacement is found. Source: The Cougar

  Carl Gulbrandsen has announced he is retiring from his role as managing director of the Wisconsin Alumni Research Foundation (WARF). Gulbrandsen has been at WARF since 1997 and served as its managing director since 2000. During his time, WARF has licensed about 100 faculty start-ups. In the past year, it provided over $100 million to support research and tech transfer at the University of Wisconsin at Madison. “Joining WARF and serving the university is the best professional decision I ever made,” Gulbrandsen says. “It is remarkable and humbling to work with very creative, intelligent people to move technologies to the marketplace and to improve lives.” John Neis, managing director of major Wisconsin VC firm Venture Investors, says that under Gulbrandsen’s leadership WARF has created an entrepreneurial spirit on campus and in the community. “They have taken a whole series of steps to make it easier for entrepreneurial-minded faculty to make it easier to pursue their dreams and expanded the efforts to shepherd them down the path of making that entrepreneurial leap,” says Neis. Gulbrandsen still plans to stay involved in patents and licensing in some capacity. “There are other challenges and opportunities out there, and I’m looking forward to doing some of this on my own clock instead of somebody else’s clock,” he comments. “At my age, you realize that time goes way too fast.” The WARF board of trustees has formed a search committee to select Gulbrandsen’s replacement, expected to be named this year. Source: Wisconsin State Journal

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Best Practices for Cost-Effective Filing of PCT and EPO Patent Applications


By David Schwartz
Published: April 15th, 2015

Foreign filing of university patents is a critical challenge for TTOs that’s often approached in a way that cedes too much control to foreign affiliates – and involves too little internal expertise. Yet there’s so much at stake – not only IP protection and potential revenues overseas, but also in the impact of foreign filing decisions on the overall patent budget. Whether and where to file, which venue to use (EPO, PCT, or directly by country), and how much you spend on each foreign application are all decisions that can have long-lasting and important implications for your technologies and for your office. Each option has its specific benefits and drawbacks, and how you structure your foreign filing work can either result in too-high charges, or it can keep costs low so you can get stretch your patent budget.

While applications can be certainly be handled stateside, many law firms farm out the work to German firms — an approach that can cost you thousands of extra dollars in the long run. You CAN cut out the middle man, save money and preserve more of your budget — all while securing high quality international patent protection. To show you how, we’ve partnered with three expert attorneys who will provide practical guidance on getting the most out of your foreign filings so you can extend protection to more of your IP. Please join us on May 19th for Best Practices for Cost-Effective Filing of PCT and EPO Patent Applications.

For complete agenda and faculty details or to register, CLICK HERE.

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6 ways to get what you want out of a negotiation without turning it into a battle


By David Schwartz
Published: April 15th, 2015

Every business wants the same thing out of a negotiation: to get what they want but also walk away with their relationship intact. No one wants to be a pushover, yet no one wants to push too hard. Though it’s certainly a challenge, experts say it’s possible to strike a balance. continue reading »

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New incubator aims to build start-ups that successfully exit in under a year


By David Schwartz
Published: April 15th, 2015

A new incubator created by French entrepreneur Nicolas Chaillan is taking a novel approach to helping start-ups by setting them up with the goal of exit shortly after launching. Here’s how it works: the AKT IP incubator sets up an exit for a company that only exists on paper, based on a patented technology from a university or IP firm. It then sets out to create that company from scratch — product, management, marketing — and sell it, setting up agreements with potential buyers before the product even goes into development. According to Chaillan, the whole process should occur within the span of six to 12 months. continue reading »

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