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Moving software through the tech transfer process requires speed, finesse


By Jesse Schwartz
Published: September 20th, 2017

Apps and software are becoming more common in TTO portfolios, but they may require a slight reworking of how you think about IP and guide it to commercialization, experts say.

This type of IP can be handled largely the same way you handle other technology, but there can be some unique aspects to keep in mind, says Daniel E. Sineway, JD, partner in the Technology/IP Group with Morris, Manning & Martin in Atlanta. Speed and rapid reaction to developments are key, he says. TTOs must find a licensee rapidly and in many cases will look to the researcher whose name is on the disclosure. The best recipe is when that researcher has the business acumen to turn the software into a business and get it to market quickly, Sineway says.

At the early stages, universities tend to be a little more discerning about what they patent in this area, he says. “In many other areas there is not a lot of thought given to that, with people saying let’s file a provisional patent and we’ll assess it later. In the majority of those cases they’ll go ahead with a full patent application later,” he says. “With software, they tend to be a little more critical and not file for some [innovations] because they’re worried about the non-patentable subject matter issues.”

But when a university is confident in the future prospects of a software project, they tend to move more rapidly than with some other technology, Sineway says. “If you compare software to life sciences or pharma inventions, for example, in those cases there is an intentional strategy to defer the patent process for as long as possible. They often will file PCT applications and at the end of that 30-month period they will file a U.S. national, trying to push out the time window to allow for FDA approvals and similar developments,” he says. “On the software side the development is far more rapid, with things changing at a far quicker pace, and the investment happens more rapidly in response to that. You also have fewer barriers to entry, so there’s no need to delay as you wait for approvals.”

Though software needs to move along at a good clip, Sineway cautions universities to take the time for proper provisional patent applications. Too often, he says, applications are not technically specific and focus more on the end result, advantages, or the business side of the project.

 “As we’ve seen case law change and become more stringent on software patents over the last seven or eight years, we’ve seen that being specific and giving examples is key. If you get a few years down the path and you don’t have that stuff in there, you’ve shot yourself in the foot with a non-patentable subject matter problem,” Sineway says. “That’s a big mistake for people new to the game, not having that level of detail in there.”

There also is less focus on international protections because many foreign countries are even more adverse to software-related technology patents than the United States, Sineway says. For a pharma invention, for instance, the university will file in many countries, but not necessarily for software.

Even though the process may move more rapidly with software, you’re still typically at the licensing phase before you have any real indication from the patent office as to how the application will be treated, Sineway says.

A detailed article on patenting software innovations appears in the September issue of Technology Transfer Tactics. To subscribe and access the full article, along with the publication’s 10-year archive of best practices and success strategies for TTOs, CLICK HERE.

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Patent Eligibility of Software Innovations in a Post-Alice Environment


By Jesse Schwartz
Published: September 20th, 2017

Since the Supreme Court’s decision in Alice v. CLS Bank in 2014, protecting software innovations through the patent process has become more challenging and filled with uncertainty. However, the Federal Circuit and the Patent Trial and Appeal Board (PTAB) have increasingly decided cases interpreting the Alice decision, providing more clarity as well as specific examples of how claims can be structured to maneuver around the Alice decision’s restrictions.

Technology transfer and IP professionals need to be aware of the shifting sands of patent practice for software-related innovations so they can effectively evaluate software-related invention disclosures and craft the strongest, most defensible claims when making an investment in patent protection.

Technology Transfer Tactics’ Distance Learning Division has teamed up with attorney Tyson Benson to lead this detailed session, scheduled for October 4th, that will feature dozens of critical strategies and takeaways: Patent Eligibility of Software Innovations in a Post-Alice Environment.

For complete program details and to register, CLICK HERE.

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Jury orders former U of Missouri professor to pay $600k in patent lawsuit


By Jesse Schwartz
Published: September 20th, 2017

A former University of Missouri (UM) professor has been ordered to pay the university $600,000 in damages as part of a patent infringement lawsuit, which we originally reported on earlier this month prior to the verdict. continue reading »

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New head of Yissum aims to take a more industry-friendly approach to tech transfer


By Jesse Schwartz
Published: September 20th, 2017

Yissum, the tech transfer arm of Hebrew University, is poised to seek closer interactions with industry under its new leader Yaron Daniely. continue reading »

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Cornell revives previously settled patent infringement lawsuit against Illumina


By Jesse Schwartz
Published: September 20th, 2017

A previously settled patent infringement lawsuit involving a Cornell University technology may be reentering the court system. continue reading »

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Sunayu acquires Johns Hopkins cybersecurity start-up


By Jesse Schwartz
Published: September 20th, 2017

Sunayu, a company focused on cloud analytics, big data and distributed systems, has acquired the John Hopkins start-up Fractal Technology. continue reading »

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Proposed legislation would launch a new tech transfer program for DOE labs


By Jesse Schwartz
Published: September 20th, 2017

U.S. Senator Martin Heinrich (D-NM) and U.S. Representatives Michelle Lujan Grisham (D-NM) and Ben Ray Luján (D-NM) have introduced legislation to launch a Department of Energy (DOE) program that would accelerate technologies from federal laboratories to the marketplace. continue reading »

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New reference: Determination of Royalty Rates for Technology Licensing


By Jesse Schwartz
Published: September 20th, 2017

The just-published Determination of Royalty Rates for Technology is packed with in-depth, expert information to help you determine an appropriate royalty rate for your specific technology. You’ll find straightforward descriptions and guidance on different models used in calculating royalty rates and valuation. With this 42-page resource you’ll receive:

  • A comprehensive review of surveys, data analysis, rules of thumb, profit differential methods and discounted cash flow analysis for determining an appropriate royalty rate for technologies.
  • Guidance on the impact on royalty rates associated with exclusivity, minimum royalty payments, upfront license fees, naked patents, and royalty rates for trade secrets.
  • Examples of various methods used to establish a royalty rate range for use in licensing negotiations including
  • Royalty rate ranges and benchmarks in specific technology sectors

Act now to get this new reference packed with tables and graphics, data analysis, and how-to information on calculating royalty rates for your technologies. For complete details and to order, CLICK HERE.

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Google VC says Cambridge beats Oxford in startups, but that might change


By Jesse Schwartz
Published: September 20th, 2017

The universities of Oxford and Cambridge have competed in sports and academics for hundreds of years, but now they face a new challenge: who can launch the most successful tech start-ups. continue reading »

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Brown accelerator teaches students start-ups and life skills along the way


By Jesse Schwartz
Published: September 20th, 2017

Brown University is running a summer accelerator program that gives students hands-on experience in launching and operating their own start-up companies. continue reading »

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University-focused VC Contrary Capital continues expansion with move onto WUSTL campus


By Jesse Schwartz
Published: September 20th, 2017

Contrary Capital, a decentralized venture fund focused on university start-ups, recently expanded its growing nationwide network of investors and founders to the Washington University in St. Louis campus. continue reading »

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Comings and goings


By Jesse Schwartz
Published: September 20th, 2017

The Trump Administration has nominated tech transfer professional Walter Copan to serve as the new director of the National Institute of Standards and Technology (NIST) and Undersecretary of Commerce for Standards and Technology.

Copan has extensive experience in both the public and private sectors. He currently serves as president and CEO of Colorado-based IP Engineering Group Corporation, and he is on the board of Rocky Mountain Innovation Partners. In government, Copan served for three years as manager of technology commercialization and partnerships at Brookhaven National Laboratory, and for two years as principal technology licensing executive at the National Renewable Energy Laboratory. Prior to that, Copan worked for the Lubrizol Corporation for 28 years, leading research development and product management.

NIST primarily develops privacy and cybersecurity guidance for federal agencies and for general use. If confirmed, Copan will replace the institute’s acting director Kent Rochford.

Source: FCW

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