Tech Transfer eNews Blog
Technology Transfer Tactics sample issue

TTO leaders have diverse opinions on ‘right’ case load for licensing staff


By David Schwartz
Published: January 21st, 2015

Is there an appropriate number of new disclosures TTO managers should assign to members of their licensing staff each year? Some observers say that AUTM statistics indicate the proper range is between 20 and 26 per year, while authors have also cited 25 as a sensible target. But while many of the dozen TTO managers Interviewed for this article agree that as a target the number 25 makes sense, they still expect a wide range of performance and cases handled among their licensing managers for a number of reasons. In fact those variables, ranging from how the department is organized to the amount of support the TTO receives from other areas of the university, led others to say it’s virtually impossible to arrive at a target number that has any real meaning.

“Our goal of 25 or 26 has been pretty consistent,” says Alan Bentley, MS, assistant vice chancellor and head of the Center for Technology Transfer & Commercialization at Vanderbilt University. “I tell people that licensing professionals can handle around two new inventions a month plus their additional portfolio, which we assume is hundreds. In AUTM statistics, if you take the number of licensing FTEs in the database and divide it into the number of technologies disclosed for all respondents you get 22-25 year over year. Our personal model jibes very well with the overall basic AUTM statistics, but I’m willing to say this would not work at some other universities.”

“While we are pretty systematic in tracking metrics on a weekly basis for what tech managers do in the number of disclosures, filings, license options and other agreements, start-up companies, new revenue brought in, total patent expenses, and patent reimbursements, I cannot say that we have a specific metric that says if you have achieved this number you have under- or overperformed,” says Lesley Millar-Nicholson, director of the Office of Technology Management (OTM) at the University of Illinois at Urbana-Champaign. While I generally accept that it’s between 25 and 30 on average, I would be remiss given the nature of the business we’re in to simply allocate that number.”

“We’ve not operated with a target number, although what they say is probably about right,” adds Erik Halvorsen, PhD, senior director, Tufts University Office for Technology Transfer and Industry Collaboration. “We have four licensing professionals with 80 this year, which is right on target. But what you have to go into is overall case load; two a month is reasonable for new disclosures, but if you have a backlog of hundreds of active innovations you’ll need to focus on marketing, and that kind of tips the balance.”

“I think [around 25] is a reasonable range,” says Brian Wright, PhD, associate director for commercialization, Office of Technology Transfer, Auburn University. “I’ve been here 12 years; we’ve had fluctuations in staff and case load, and when we go above that number we have trouble doing it right. We become a ‘patent factory,’ file more patents than we should, and do not evaluate innovations properly.”

But Dan Sharp, OTC director and associate vice president for research at UT Austin, says, “we do it a little differently. You just don’t have that kind of control. We have licensing specialists as a general matter in a particular field, and when we receive disclosures they are assigned to the appropriate licensing specialist.”

Certain deals, he notes, are “extraordinarily involved,” and individuals with such deals might have a smaller case load than their colleagues. “And if they say ‘I just say can’t get to this right now,’ we may assign it to someone else,” Sharp adds. He reports that in the last fiscal year there were 205 disclosures assigned to seven people. “We may do things more dynamically,” he continues. “Maybe we’re old school — suck it up and do the work.”

And Brendan Rauw, president and CEO, Westwood Technology Transfer and associate vice chancellor and executive director of entrepreneurship at the UCLA Office of Intellectual Property & Industry Sponsored Research, notes that “we don’t manage to a target, but I will say the target of 25 per year is about half of what we are doing. We bring in about 50 disclosures per license officer per year. Our team is doing an excellent job; it takes a lot of work to manage that load, but I don’t think it’s unmanageable.” A detailed article examining case load for licensing staff appears in the January issue of Technology Transfer Tactics. To access the full article, as well as the publication’s entire archive filled with hundreds of case studies and success strategies for TTOs, CLICK HERE.

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U of Texas cancer center licenses novel T cell therapy for $100 million


By David Schwartz
Published: January 21st, 2015

Biotech firm Intrexon Corporation and its partner ZIOPHARM Oncology have secured an exclusive license agreement with the University of Texas MD Anderson Cancer Center to accelerate a series of non-viral adoptive cellular cancer immunotherapies. continue reading »

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TOMORROW: Webinar to provide expert guidance on university VC funds


By David Schwartz
Published: January 21st, 2015

Your university’ s start-ups need fuel to run — fuel in the form cash — and gap funds and proof-of-concept grants can only go so far. To address this critical need, a growing number of universities have become investors in their own spinouts, creating venture capital funds or partnering with existing funds that back high-potential start-ups based on faculty and student innovations. The University of California’ s recent $250 million fund is just the latest in this growing trend, and the forward-thinking schools building these investment vehicles stand to reap a host of benefits for their universities, their TTOs, their faculty, and their communities.

The promise is great, but getting there is no easy road. Creating, structuring, staffing, and operating a VC fund is a huge challenge that is not to be undertaken without the right strategies and expert guidance. That’ s why Technology Transfer Tactics’ Distance Learning Division has recruited two world-class experts: Michael Silton, Executive Chair of the UCLA VC Fund, and Bill Harrington, Managing Partner at Osage University Partners, to reveal the trends and unique approaches you can take to identify and develop investment and fund development opportunities in the university environment.

Please join us TOMORROW, January 22nd for this outstanding distance learning event: University VC Funds: Provide the Fuel for Your Commercialization Engine. For complete details and to enroll, CLICK HERE.

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The pros and cons of a residual clause in an NDA


By David Schwartz
Published: January 21st, 2015

In his recent blog post, patent attorney Larry Schroepfer points out a certain clause that is being used increasingly in nondisclosure agreements: the “residuals” clause. This clause stipulates that if in the process of working with the other party’s intellectual property, the receiving party learns from that IP and makes some general development, it will have the right to use that development despite the nondisclosure and nonuse provisions of the confidentiality agreement. continue reading »

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Richman Chemical offers Technology Assessment Reports to start-ups and TTOs


By David Schwartz
Published: January 21st, 2015

Richman Chemical Inc. has announced the commercial launch of Technology Assessment Reports (TARs) to help companies and tech transfer offices evaluate innovations for commercial potential. The TARs will provide users with cost-effective production improvement strategies and tips to streamline commercialization. continue reading »

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Canada’s National Research Council licenses novel Alzheimer’s treatment to KalGene


By David Schwartz
Published: January 21st, 2015

The National Research Council of Canada (NRC) and KalGene Pharmaceuticals have entered into a licensing agreement to develop and commercialize a novel treatment for Alzheimer’s. continue reading »

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GSK partners with academic researchers to target cancer’s “Achilles heel”


By David Schwartz
Published: January 21st, 2015

A group of scientists is collaborating with GlaxoSmithKline to target what they believe to be cancer’s “Achilles heel.” The project is part of GSK’s Discovery Fast Track Challenge, a program to accelerate the development of new medicines. GSK selected Maureen Murphy, a professor at the Wistar Institute; Donna George, associate professor at the University of Pennsylvania; and Julie Leu, also an associate professor at Penn, to help advance their research on a potential cure for cancer. continue reading »

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Four steps start-ups should take to survive the due diligence process


By David Schwartz
Published: January 21st, 2015

In his recent article for Entrepreneur, start-up expert Martin Zwilling offers advice to founders on how to survive the due diligence process conducted by investors. continue reading »

University Start-Up Boot Camp Volume II: Beyond the Basics ~ This exhaustive, invaluable collection contains over 11 hours of detailed guidance and advice led by a world-class roster of academic start-up experts. Click here to order >>

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Survey of Higher Education Strategies to Win Grants from the NIH


By David Schwartz
Published: January 21st, 2015

The all-new Survey of Higher Education Strategies to Win Grants from the National Institutes of Health includes data and in-depth commentary and analysis based on extensive survey results from more than 30 research universities and medical schools pursuing NIH grants. This 132-page, must-have resource provides a rich set of data to compare your practices in pursuing NIH research grants with other research institutions. It’s jam-packed with dozens of easy to scan charts and figures displaying critical data you can’t find in any other publication. Here’s a small sample of questions answered in this unique report:

  • How skilled do universities view their researchers in making contacts at the NIH, understanding its range of grant programs, and foreseeing questions that might be posed in NIH peer reviews? 
  • What percentage of grants are R01 grants? 
  • What percentage of grant volume results from collaborations with other institutions? With the private sector?
  • How many schools have hired consultants to assist with NIH grant pursuit and what have been the results? 
  • How much staff time do institutions expend in monitoring the NIH for grant opportunities?
  • How many institutions have grant mentoring programs for junior faculty?
  • How many workshops do colleges offer annually in NIH grant preparation, and how well attended are these workshops? 
  • How do universities evaluate their NIH grant procurement efforts?  

The data in this comprehensive report is broken out separately by criteria such as college size and type, as well as by NIH grant volume. Data is also presented separately for research universities, medical schools, and other institutions. Compare your university to your peers! Get detailed analysis and results in more than 140 data tables. For complete details and to order, CLICK HERE >>

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Why entrepreneurs should stop looking for a co-founder


By David Schwartz
Published: January 21st, 2015

In his recent blog post, angel investor and entrepreneur Dave Lerner warns founders who insist on seeking a co-founder before going any further with their business idea – the urge is to give away part of your company is not a good sign. “The very act of looking for a co-founder is already a sign that you are hopelessly unprepared for the coming venture — and going about things in a completely backwards way,” Lerner writes. continue reading »

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U of Wisconsin researchers report breakthrough using nanotubes to extend battery life


By David Schwartz
Published: January 21st, 2015

Researchers at the University of Wisconsin (UW)-Madison have made a potential breakthrough in using very small technology to extend the battery life of some electronic devices. Led by professor Michael Arnold, the research team is developing specialized carbon nanotubes, or cylindrical-shaped sheets of carbon that are a billionth of a meter in diameter. The nanotubes are very strong yet flexible, and are great conductors of electricity. At the same time, researchers have experienced difficulties organizing and integrating them into electronic circuits. continue reading »

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Student entrepreneurship stirs review, revision of IP ownership policies


By David Schwartz
Published: January 14th, 2015

With more students becoming entrepreneurs and developing IP before they graduate, universities across the country are taking another look at their policies on ownership of that IP. Some are establishing policies that give all ownership rights to the students in hopes of spurring more of the business development that TTOs usually expect from faculty. Others should be reassessing their ownership policies but aren’t, simply because they haven’t yet realized the damage that can be done by an outdated policy, according to some observers.

Underlying the shift is a realization among university and tech transfer leaders that the old assumptions about IP have been outpaced by the way technology is developed now. Most schools have used language that implied, or stated outright, that a student’s IP belonged to the university because school resources were used in the development. That outdated approach only discourages student development without preserving anything of value for the school, according to Dan Hasler, PhD, president and chief entrepreneurial officer of Purdue Research Foundation.

Purdue changed its approach to student IP two years ago, and other schools are headed down the same road. The University of Texas (UT) in Austin is awaiting the recommendation of a special task force set up to investigate the issue, and the University of Arizona (UA) recently assessed its policy as part of a multi-tiered push for more student innovation and commercialization.

Hasler says tech transfer leaders are realizing that, instead of garnering more IP and revenue for the school, a draconian policy means everyone is shortchanged.

“We knew that we had a lot of students who were not sharing their innovations on the campus and not starting their companies in the light of day on campus because they were afraid they were going to lose their intellectual property to the university,” Hasler says. “They would graduate, move to another state, and start their business. We gained nothing and the student wasn’t able to take advantage of all the help we can offer.”

As at many universities, Purdue University’s policy on student IP is broadly stated and enveloped students even if was never intended to, Hasler says. The policy says any invention created with the use of Purdue resources is subject to university ownership. Until recently that was interpreted to include student IP as well, but not because anyone had addressed the matter seriously. As student entrepreneurship has skyrocketed, however, it became a more critical issue to address.

The school’s new interpretation offers students clear ownership rights as long as the resources used were part of a course and were available to all students in the course; that the student was not paid by the university or a third party; and the class or project was not supported by a corporation or government grant or contract.

“We wanted them to feel like they could be aggressive in pursuing these developments, but also to feel confident in seeking help,” Hasler says. “We’d like to see them stay in Indiana with their business, and the first step is telling them they can come out of the closet, be public, and get the help they need.” The change in policy does not affect IP developed with government grants or controlled by the Bayh-Dole Act.

The ownership question also is being debated in Texas. In December, the UT Systems Board of Regents formed a special task force to investigate student IP rights for the University of Texas. Gregory L. Fenves, PhD, executive vice president and provost at UT and a member of the task force, says the current policy allows the school to claim ownership.

“The general interpretation is that the university has the right to claim any IP that is creating using any of its facilities and resources,” Fenves says. “When it comes to students we have generally dealt with that on a case by case basis and usually assigned the ownership to the student. But the policy can be interpreted in the university’s favor.”

Commercialization efforts can be hampered by any ambiguity in the policy, notes Juan M. Sanchez, PhD, vice president for research at UT. A serious investor in a student’s IP will want to know with certainty that there will be no dispute about ownership, he says. Telling the investor that the university “usually” doesn’t try to keep the IP simply isn’t good enough.

“It’s not that we’re claiming their IP all the time. We aren’t,” Sanchez says. “It’s just that we can. That’s enough to create a problem with investors.” Fenves favors a modification of the policy to make clear that students own IP they develop at UT. “We’re much better off in the long run by having those students dedicated, loyal, and generous to the university as alumni than trying to hold on to IP they create as a student,” Fenves says. A detailed article on changes in student IP policies appears in the December issue of Technology Transfer Tactics. To access the complete article as well as the publication’s 8-year archive of best practices and TTO success strategies, CLICK HERE.

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