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GAO report critical of Federal Lab Consortium’s efforts to support tech transfer


By David Schwartz
Published: October 15th, 2014

A recent report by the Government Accountability Office (GAO) concludes that the Federal Laboratory Consortium for Technology Transfer (FLC), a group of representatives from federal agencies and about 350 federal labs, is not doing enough to promote the transfer of national lab technologies to private sector companies.

According to GAO, although FLC has taken steps to reach out to industry, it isn’t fully assessing their needs or soliciting feedback to improve the tech transfer process.

GAO’s specific critiques include a web-based search tool FLC launched in 2012. The site was designed to help companies identify relevant technologies across hundreds of federal labs, yet FLC didn’t make contact with the private sector first to understand its needs. Once the tool was launched, companies complained about the limited opportunity to interact personally with federal researchers, as well as limited data on all tech transfer opportunities, lack of ability to compare technologies across labs, and little data on the market relevance of available IP.

“Representatives of potential customer groups indicated that there was a significant mismatch between the information that would allow them to identify opportunities and what FLC’s initiatives currently provide,” the report reads.

GAO also criticizes FLC for not setting performance goals and measures to identify initiatives that are working and those that need improvement. Doing so would also more clearly indicate to Congress and the Obama administration how FLC is progressing in meeting its goals.

FLC generally agrees with the report’s findings and claims the web-based tool will be developed further. Given the group’s small budget and staff, GAO suggests it work more collaboratively with agency and lab members so it can better communicate with potential industry customers, solicit more feedback and develop performance measures. E-News readers can access the full report here.

Source: Fierce Government

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Increase Mobile App Disclosures through On-Campus Contests: Case Study of UPenn’s “AppItUp Challenge”


By David Schwartz
Published: October 15th, 2014

The ever expanding market for mobile apps presents technology transfer offices with a tremendous opportunity for new revenues as well as new relationships with students and faculty creating apps on campus. But how do you capitalize most effectively and create an ongoing, meaningful revenue stream – as well as a great way to build good PR and new relationships — without overloading your already stretched TTO staff?

The University of Pennsylvania’s UpStart Program has a success story to share — a campus-wide competition called AppItUp. The competition casts a wide net looking for the next big app idea, tapping not only computer scientists and business majors but also nurses, doctors, historians, poets, lawyers and anyone else who has an app idea but no way of making it a reality. The AppItUp challenge serves to filter through these ideas to find the most promising, then works with partners in mobile app funding, development and marketing to build companies around these high-potential apps.

Technology Transfer Tactics’ Distance Learning Division has tapped the leadership team from UpStart and AppItUp for a case study webinar, so you can learn from their success and adapt their best ideas in your own program. Join us on November 12th for this detailed session: Increase Mobile App Disclosures through On-Campus Contests: Case Study of UPenn’s “AppItUp Challenge.” For complete program details and to register, CLICK HERE.

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Oxford’s Isis Innovation sells prenatal testing technology to Sequenom for $14.5M


By David Schwartz
Published: October 15th, 2014

Isis Innovation, the tech transfer arm of the University of Oxford, has sold the right to a noninvasive prenatal testing technology to life sciences company Sequenom Inc. Under the agreement, Sequenom owns global intellectual property rights to the Oxford-developed technology, which tests paternally inherited fetal nucleic acids derived from maternal plasma or serum in order to provide noninvasive prenatal genetic diagnostic testing. continue reading »

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Stanford adds widgets on website that map IP and research connections


By David Schwartz
Published: October 15th, 2014

Stanford University’s Office of Technology Licensing (OTL) has debuted a new feature on TechFinder, its online technology transfer portal: embedded widgets that visually illustrate the connections between researchers, technologies, projects, publications, and patents. continue reading »

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U of Michigan extends MCubed funding program, citing success of interdisciplinary teams


By David Schwartz
Published: October 15th, 2014

The University of Michigan (U-M) is extending its novel, grassroots-style innovation fund MCubed for another two-year cycle. continue reading »

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University-Industry Partnership Distance Learning Collection released


By David Schwartz
Published: October 15th, 2014

Strategic partnerships among universities, corporations, government agencies, economic development groups, and investors have come to characterize a wide swath of research commercialization activity. The trend is a reflection of the increasing sophistication and business-like approach that TTOs are adopting to expand and thrive in a more connected and interdependent world. However, partnerships can succeed wildly or fail miserably, depending on how they are structured, nurtured, and operated. Optimizing the results of your partnering agreements takes diligent work before and after the deal is inked.

That’s where The University-Industry Partnership Distance Learning Collection comes in. This strategy-packed distance learning package offers over 4 hours of expert guidance on critical partnership issues such as contracting, IP ownership, COI and compliance matters – plus new partnership models that are pulling in new, lucrative long-term sponsored research and licensing deals. The collection includes these four individual programs for one low price:

  • The Anatomy of a Great Industry-University Partnership
  • Best Practices for Drafting University-Industry R&D Partnership Agreements
  • How to Manage Conflicts of Interest in Large-Scale Industry Partnerships
  • New Models of University-Industry Partnership: U Minnesota’s “MN-IP Create” and “Try and Buy” Programs

The collection comes in all three available formats — DVD, Video On-Demand and PDF Transcript – so you can conveniently share it where, when, and how you wish. For complete details and to order, CLICK HERE.

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NIH launches NSF-inspired program to train funded researchers how to start a business


By David Schwartz
Published: October 15th, 2014

The National Institutes of Health (NIH) has launched a pilot program to boost the development and commercialization of new products and services that are being funded through NIH Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) awards. continue reading »

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UCSD licenses automated, real-time delivery system for oxygen therapy 


By David Schwartz
Published: October 15th, 2014

Tech commercialization company ieCrowd has licensed a new class of supplemental oxygen devices developed at the University of California-San Diego (UCSD). continue reading »

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U of Edinburgh start-up turns LED light bulb fittings into wireless networks


By David Schwartz
Published: October 15th, 2014

A University of Edinburgh spinout is commercializing a light bulb fitting that doubles as a home wireless network. The start-up PureLiFi is the first ever to use LED lightbulbs to send signals to create a two-way high-speed internet connection, turning any ordinary light fitting with an LED bulb into an internet access point. A group of hi-tech investors are on the verge of sealing $10 million in funding to help the company hit the market. continue reading »

Global Patent Litigation: How and Where to Win ~ Examine the costs, risks, and benefits of patent litigation in 16 countries, including China, India, and Brazil. Click here for details >>

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Purdue startup develops less expensive, more specialized radiation detectors and safer adhesive sealants


By David Schwartz
Published: October 15th, 2014

A Purdue University start-up is commercializing a technology that offers a more cost-effective means of detecting radiation, as well as a production method to make sealants and adhesives safer. continue reading »

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Comings and goings


By David Schwartz
Published: October 15th, 2014

• Princeton University’s Office of Technology Licensing has named W. Bradford Middlekauff, who has served executive roles in a number of tech companies, to become its first executive in residence. In his new role, Middlekauff will offer an entrepreneurial and industry-based perspective, advising faculty and students on how to bring ideas to the marketplace, be it through licensing or start-up formation. “We envision the executive in residence as becoming involved in a range of activities, from discussing with Princeton inventors the commercial prospects for their research to providing guidance to faculty and student entrepreneurs looking to create start-ups,” says John Ritter, director of technology licensing at Princeton. “We are excited,” he adds, “about the ability to bring the depth of Brad’s expertise in start-ups and university spinoffs to the Princeton community.” Middlekauff previously served as chief legal officer at Kolltan Pharmaceuticals, a Yale University start-up focused on cancer therapeutics. From 2000 to 2008 he was senior vice president and general counsel at Medarex Inc., a Dartmouth start-up developing antibody-based treatments for cancer. As Princeton’s executive in residence, Middlekauff will also help evaluate the university’s unlicensed intellectual property for commercial viability, provide input on Princeton’s patent and seed fund decisions, and speak to students about entrepreneurship and tech transfer. Source: News at Princeton

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Universities face an increasing likelihood of inter partes reviews


By David Schwartz
Published: October 8th, 2014

Inter partes review (IPR) can have a staggering impact on your TTO if it results in the loss of valuable patents, and some legal experts say you can expect to see more of this strategy in the future. IPRs cannot be avoided entirely, but there are ways to make this new form of patent challenge as difficult as possible.

Introduced by the America Invents Act (AIA), an IPR is trial to review the validity of a patent on the basis of prior art consisting of patents or printed publications. In other words, your patent is being challenged by someone saying the product or IP already existed or is obvious based on prior art and therefore you never should have received the patent.

The U.S. Patent and Trademark Office reports that there were over 600 IPR petitions filed in the first five months of 2014 — 100 more petitions than were filed in all of 2013. That, along with recent cases in which universities lost patents through IPR, is a troubling trend, says B. Scott Eidson,JD, a partner with the law firm of Armstrong Teasdale in St. Louis, MO. Some of those IPR petitions are directed at non-practicing entities, Eidson notes, but there have been 30 different IPR proceedings involving universities.

Of those 30, Eidson points out that two were filed in 2012, 18 in 2013, and 10 so far in 2014. The petitioner is usually an entity that was using the IP or product and refused demands to pay licensing fees to the university or licensee. If there is not yet any licensee, the petitioner is challenging the patent itself.

“Universities are going to see an increasing number of challenges to their patents, whether it is an enforcement action by a licensee or whether it is a negotiation tactic by a potential licensee,” Eidson says. “These patent office procedures are going to be used against universities more. There’s an upward tick in the stats for university patents being put into IPR proceedings.”

The Washington, DC-based law firm of Fish & Richardson recently crowed about achieving complete victories in three IPR cases filed against semiconductor patents held by the University of Illinois. Boston University, The University of North Carolina-Chapel Hill, Duke University, and Stanford University are among those that have also been through IPR proceedings.

An increase in IPRs would seem to validate all the worries when the AIA first came about regarding licensees suing to invalidate patents, says Wesley D. Blakeslee, who served as executive director of the Johns Hopkins University TTO from 2006 until his retirement in July. However, Blakeslee — who launched a consulting firm after bowing out of Johns Hopkins — is

not so sure the sky is falling.

“One could say this is a potential problem for anyone who holds patents. The reason it is perceived as a threat to universities is that they make very early stage discoveries and have to invest money long before you know if anyone is going to be interested in the patents,” Blakeslee says. “Tech transfer is a cost center for most universities, not a profit maker, so any kind of threat that makes it more expensive for universities to keep funding those early discoveries has to be taken seriously.”

With the business community increasingly aware of the IPR option, Eidson says more potential licensees will be weighing the cost of the license vs. the cost of petitioning for IPR. “This could have a chilling effect on doing some deals, making it difficult for some start-ups to get the deal they normally get,” Eidson says. “They may have people saying they will go the IPR route to the see prior art and potentially avoid the license altogether.” A detailed article on inter partes review appears in the September issue of Technology Transfer Tactics. To subscribe and access the full article, plus gain immediate access to the publication’s 8-year online archive of best practices and success strategies for TTOs, CLICK HERE

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