Tech Transfer eNews Blog
Technology Transfer Tactics sample issue

U of Minnesota files patent infringement lawsuits against Verizon, AT&T, T-Mobile and Sprint


By David Schwartz
Published: November 19th, 2014

The University of Minnesota (UMN) recently filed a batch of patent infringement lawsuits against four of the world’s largest cell phone carriers.

UMN is claiming one of its professors, Georgios Giannakis, invented key technology behind the LTE protocol, a standard for high-speed wireless communication that is currently being used by Verizon, AT&T, T-Mobile and Sprint to connect mobile phones.

According to the university, Giannakis did work “that improves reliability and speed” on LTE networks. The lawsuits accuse Verizon, AT&T, T-Mobile and Sprint of violating U.S. Patent Numbers 7,251,768; RE45,230; 8,588,317; 8,7717,175; and 8,774,309. Each lawsuit points out that UMN reaps $40 million in patent licenses each year, and that “the University reinvests its royalty revenues in its mission of serving the people of the State of Minnesota.”

The lawsuit is relatively unusual among universities, and it has drawn some criticism. Some accuse universities like UMN of using their status as powerful “non-practicing entities” to engage in litigation strategies similar to those of patent trolls.

The UMN action and other recent university suits are taking place against the background of a heated argument over a record-setting patent win by Carnegie Mellon University. In 2012, CMU won a $1.17 billion verdict against Marvell Semiconductor, and that figure has grown to $1.54 billion. The case is now on appeal. Last month, the University of Minnesota and several other universities filed a brief (PDF) supporting Carnegie Mellon’s landmark win.

Eric Kaler, president of UMN, comments, “Every day, our faculty is developing life-changing inventions and cures for the common good. That is what a great research university does. We must vigorously protect our faculty, those discoveries, and the overall interests of our university.” The defendant companies haven’t publicly commented on the UMN suits.

Source: Ars Technica

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Experts to provide guidance on CRM systems for TTOs


By David Schwartz
Published: November 19th, 2014

If your TTO is looking for a CRM system, making the right choice can seem like walking through a maze of options, with each turn leading to more questions than answers. Perhaps even more challenging is what happens after the system is installed. Without expert guidance and a clear plan of attack, the full functionality and optimal benefits garnered from a CRM may simply never materialize.

That’s why Technology Transfer Tactics has recruited three experts in the field to share their experiences, lessons learned, and specific advice that will save you hours of staff time and clarify what criteria should guide your CRM decision. And beyond that, they will provide valuable guidance to both CRM seekers and current CRM users on how to extract the most value from your system.

Join us on December 11 for this practical webinar filled with real-world guidance: Best Practices for Choosing and Using a CRM System for Your Tech Transfer Office. For complete program and faculty details or to register, CLICK HERE.

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Make sure your license agreements don’t unwittingly jeopardize your standing in court


By David Schwartz
Published: November 19th, 2014

In their recent article for JD Supra Business Adviser, patent law experts Patrick Arnez and Sharon Roberg-Perez caution universities on the potential legal consequences of their license agreements, warning that if they cede too much in their agreements they may literally lose the right to protect their own IP. continue reading »

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Life sciences IP suffers from pinball effect in licensing as new indications emerge


By David Schwartz
Published: November 19th, 2014

In a perfect world of life sciences licensing TTOs may dream of, a discovery made at a university is patented and licensed to a biotech company, which continues developing it until it has established proof-of-concept in humans.Then a larger firm with the capabilities to conduct expensive late-stage clinical trials swoops in and carries the molecule the rest of the way to FDA approval and market launch. Unfortunately this linear model, though ideal, rarely plays out in the development of new drugs. Instead, the path to market is bumpy and laden with inefficiencies – from funding gaps to lag time as license agreements are sought and made between universities and companies.

A trio of business professors from Georgia Institute of Technology recently documented what they say are significant inefficiencies in the drug commercialization process and have offered their prescription for reducing the time and cost required for a new drug to reach FDA approval – which they calculate to be 13 years on average with a price of several billion dollars.

What’s needed, they say, are more initiatives that encourage the sharing of basic research during the earliest stages of development. Matthew Higgins, Jerry Thursby and Marie Thursby in Georgia Tech’s Scheller College of Business authored the paper “Bench-to-Bench Bottlenecks in Translation,” recently published in Science Translational Medicine. Their analysis looks specifically at one challenge that appears to be one of the biggest areas of disconnect in life sciences commercialization: Inefficiences that occur as inventions are passed from university to company to company for development in indications beyond those in the original patent or license.

They examined the twisting commercialization paths of some 835 patents involved in 342 license deals among universities and biotech firms to see how many compounds were eventually sublicensed to a second firm for development in a new disease category. Because companies rarely share their research, a sublicense essentially resets the development timeline – a process the authors refer to as bench-to-bench translational research.

They found that 27% of the inventions appeared in a second license agreement after an initial deal between a university and a biotech firm. This could indicate that a molecule progressed in development beyond a firm’s capabilities, or was found to have potential in an area beyond the interests of the initial licensor.

But most telling of the bottlenecks in early-stage development is their finding that, of the 92% of molecules that were at the discovery/lead molecule stage when they were first licensed, 70% of those eventually sublicensed were still in the discovery stage at the time of second licensing. And the average time between first and second licensing was 3.5 years — nearly a quarter of the  average time it takes a drug to go from discovery to approval.

Four in five molecules involved in a second license saw some change in disease indication with the second license. This mean that new uses for drug candidates are often discovered during the mid-stages of development. “During the earliest stages of study and experimentation, it’s highly unlikely that an academic lab can identify all relevant disease categories an invention may serve,” the authors write. And, because institutions typically guard specific information about their early-stage programs carefully, it typically takes years for a second licensee to emerge. A detailed article on the study’s findings and recommendations appears in the October issue of Technology Transfer Tactics. To subscribe and access the full article, as well as the publication’s rich eight-year archive of proven success strategies and best practices for TTOs, CLICK HERE.

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Kansas State researchers develop new insect control technology


By David Schwartz
Published: November 19th, 2014

Researchers at Kansas State University (KSU) have invented a safe, high-tech method to keep away mosquitos and other insects. Developed by Kun Yan Zhu, professor of entomology; Xin Zhang, research associate in the Division of Biology; and Jianzhen Zhang, visiting scientist from Shanxi University in China, the technology involves a group of nanoparticles comprised of a nontoxic, biodegradable matrix and double-stranded ribonucleic acid (dsRNA) derived from an insect. When it comes in contact with an insect, the dsRNA triggers a biological process known as RNA interference (RNAi) to destroy the genetic code of an insect in a specific DNA sequence. continue reading »

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Colorado State and U of Colorado Health partner to develop medical devices


By David Schwartz
Published: November 19th, 2014

Researchers and students at Colorado State University (CSU) and clinicians at the University of Colorado Health (UCHealth) hospitals are collaborating to develop potential breakthroughs in medical technology. The partnership will provide UCHealth with access to the university’s latest technologies while giving CSU researchers and students a venue to test their inventions. Because CSU doesn’t have its own medical school, until now its researchers have not had a clinical outlet for their inventions and often had to go out of state to perform testing. continue reading »

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Six ‘zinger’ clauses that shouldn’t be found in an NDA


By David Schwartz
Published: November 19th, 2014

In his recent blog post, IP attorney Larry Schroepfer writes that no matter how typical a non-disclosure agreement (NDA) may appear, read it over carefully – occasionally it may contain hidden clauses you shouldn’t agree to. “We’ve seen so many [NDAs] that we get jaded and tend to push them along without any real thought,” Schroepfer writes. “But every now and then you see an NDA that includes something from out of left field, usually something that doesn’t really belong in an NDA, sort of a ‘zinger’ or a ‘gotcha.'” continue reading »

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Rutgers professor working toward potential breakthrough in stem cell therapy


By David Schwartz
Published: November 19th, 2014

A Rutgers University researcher is developing a way to overcome one of the key barriers to harnessing the full therapeutic potential of stem cells. Associate chemistry professor Ki-Bum Lee and colleagues at Rutgers and Kyoto University in Japan have invented a platform called NanoScript, and it could become a breakthrough for researchers in the area of gene expression. continue reading »

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2014 edition of Top University Business Incubators Global Benchmark released


By David Schwartz
Published: November 19th, 2014

In the new, just-published 2014 edition of Top University Business Incubators Global Benchmark, over 800 incubators worldwide were assessed and more than 300 were benchmarked. This one-of-a-kind report reveals the qualities that make a top incubator and how they perform in comparison to average incubators. It measures university incubators using the UBI Index benchmark framework with more than 60 key performance indicators.

You can discover how your incubator compares on a wide range of data points, so you can spot weaknesses and improve performance. The new edition of the report also includes a customized Incubator Benchmark Scorecard for each purchasing organization. See how your incubator stacks up against the global average, top average, regional average, sector average and country average. You’ll receive a personalized, intuitive scorecard along with a 30-minute presentation of your performance. For details and to order, CLICK HERE >>

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Tips on valuation for seed-stage start-ups


By David Schwartz
Published: November 19th, 2014

In his recent blog post, Joseph Walla, CEO of HelloSign and HelloFax, advises founders of early-stage start-ups on ways to valuate their companies. “There’s a reason it’s so difficult to figure out,” he writes. “Valuations have little basis in reality for early-stage companies. You evaluate the team, product, market and other variables — then, make a general guess.” Despite conceding the guesswork involved, Walla offers several rules of thumb and valuation when attempting to arrive at a seed round valuation:

  1. Market size. A bigger market means bigger potential. For some investors, this is the most important attribute, and they won’t even consider investing unless it’s a big market.
  2. Revenue. This is the most traditional way a company is valued. Early-stage companies don’t usually have real revenue, so it’s not always a good indicator of future potential. That being said, if you do have revenue, it’s something you should truly emphasize.
  3. Month on month (MoM) growth. To become a successful company, you need steady MoM growth for years, and 20% MoM growth is the gold standard. Even if it’s a product investors don’t fully understand, if it has high MoM growth, they are more likely to invest.
  4. Active users. The engagement of your paying users is important, and so is that of free users as long as you understand when a free user is valuable and when it isn’t.
  5. Team. Having a team from a prestigious institution like Stanford or MIT is helpful, but not necessary. A team with domain expertise can be just as valuable.
  6. Valuations of similar companies. If your valuation is comparable to other companies on Angellist, Y Combinator, 500 Startups or similar platforms, investors are more likely to show interest.
  7. Acquisitions of similar companies. In the same vein, if a company similar to yours has been acquired, show it. “It shows real liquidity for what companies will pay for a company like you,” says Walla, “instead of what an investor will pay to invest.”
  8. Raising momentum/high demand. Though this method is less based in reality, it can help to show that your company is in high demand and for good reasons.
  9. Accelerator. It also helps if your company went through an accelerator, which means you’ve at least been partially vetted and are de-risked to some extent.

“You’ve probably noticed at this point that there’s no clean formula,” Walla concludes. “The key is to not spend too much time thinking about it. Some incredible companies, like Dropbox and Airbnb, got valuations that would seem extremely low in this market for their first rounds.”

Source: Joseph Walla

The Guide to Intellectual Property Valuation ~ This guide presents a framework for conducting due diligence of IP rights, performing sound legal analysis, and correlating the impact of IP rights on value. Click here to order >>

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U Vermont expands entrepreneurship initiative to faculty across campus


By David Schwartz
Published: November 19th, 2014

SPARK-VT, an entrepreneurship initiative led by the University of Vermont (UVM) Department of Medicine, is expanding to engage faculty across campus. Modeled after the SPARK program at Stanford’s School of Medicine, the program connects UVM faculty with leading experts from the biotech, pharmaceutical, business and legal fields and provides seed funding to boost the development and commercialization of research through faculty entrepreneurship. continue reading »

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Mass General licenses patent aimed at treating retinal disease


By David Schwartz
Published: November 19th, 2014

Massachusetts General Hospital in Boston has signed an exclusive, worldwide license agreement with RetroSense Therapeutics, a privately-held biopharmaceutical company, for technology aimed at restoring vision in patients with retinal disease. The deal provides RetroSense with intellectual property that strengthens its position in the field of optogenetics for vision restoration. continue reading »

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