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Attorney: Don’t put too much faith in sovereign immunity


By Jesse Schwartz
Published: January 17th, 2018

Sovereign immunity can add to the value of patents owned by state universities, but it is not an ironclad defense against patent challenges — at least not until we hear more from the courts, an attorney cautions.

Go ahead and promote sovereign immunity as an extra bit of insurance to potential licensees if you want, but don’t make promises that the patent is safe from legal action, says Paula Estrada de Martin, PhD, JD, a life sciences and biotechnology patent attorney with the law firm of Baker Donelson in New Orleans.

The issue of sovereign immunity has been tested three times in 2017, in cases involving the University of Florida, the University of Maryland, and the University of Minnesota. In each case, the Patent Trial and Appeal Board ruled that these state schools were immune from IPR proceedings challenging their patents based on the 11th Amendment of the U.S. Constitution.

The cases are now giving rise to cases that push the boundaries of sovereign immunity, including the sale of patents to American Indian tribes, who then license the patents back to large pharma companies for cash and protect the companies from IPR challenges via their sovereign immunity. The first such case involves IPRs filed by Mylan Pharmaceuticals against six patents that were owned by Allergan at the time of the filing. In September Allergan assigned the patents to the Saint Regis Mohawk Tribe, which granted back to Allergan an exclusive limited field-of-use license and then notified the Board that it was the new owner of the patents. A week later the Saint Regis Tribe filed a motion to dismiss based on tribal sovereign immunity.

Another case with more direct impact on universities also appears to be stretching the limits of a sovereign immunity defense, Estrada de Martin says. Unlike the other cases involving IPR challenges, Ali v. Carnegie Institution of Washington pits a researcher who claims he was improperly omitted as a co-inventor seeking damages. The suit has been dismissed by the courts thus far on sovereign immunity grounds, but the researcher has petitioned to the U.S. Supreme Court.

The Ali dispute involves a graduate student’s work at the University of Massachusetts regarding mRNA inhibitors. The researcher he worked with, Craig Mello, was awarded the Nobel Prize along with a colleague from Carnegie, and several related patents are owned jointly by the universities.

The graduate student was not listed as an inventor and sued the schools. A court dismissed the University of Massachusetts on grounds of sovereign immunity, and Carnegie was also dismissed because the University of Massachusetts was deemed an indispensable party to the litigation.

The plaintiff is petitioning the Supreme Court, but Estrada de Martin says sovereign immunity is “a smokescreen” for the real issues in the case, and it is not the right test case for the question of state schools being immune from patent challenges.

Some tech transfer officials look at the Ali case and go too far in their conclusions about what it means for patents at state universities, she says. Universities would be better off focusing on clearly defining policies on crediting inventors and determining inventorship, she comments. Estrada de Martin also points out that sovereign immunity decisions made by PTAB have limited impact on future matters, since they do not involve potentially precedential court rulings.

“Don’t put too much confidence in these decisions from the patent offices because they don’t hold too much water in terms of how they can persuade a district court or the federal circuit,” she says. “It’s working out in [universities’] favor now, but we don’t advise investors to change any strategies with their portfolios related to technology developed at public universities. These decisions are encouraging in that respect but not enough to suggest anyone invest more in those universities.”

A detailed article on the status of sovereign immunity for public universities appears in the December issue of Technology Transfer Tactics. To subscribe and get the full article, plus hundreds of best practices and success strategies for TTOs in the publication’s online archive, CLICK HERE.

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Harvard web-development tool is being turned into a start-up


By Jesse Schwartz
Published: January 17th, 2018

A software technology that helps Harvard University departments create high-quality websites for free is now expanding to provide its services outside of the school. continue reading »

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Maintaining Compliance with iEdison: A Practical Guide for Universities


By Jesse Schwartz
Published: January 17th, 2018

Universities report frustration keeping current with iEdison reporting requirements, as well as keeping up-to-date information reported in a timely manner. Managing older inventions and weeding through countless notifications can be time-consuming and confusing. On top of all that, ensuring the way you report and update your inventions doesn’t raise compliance red flags is a huge challenge.

That’s why Tech Transfer Central’s Distance Learning Division has teamed up with attorney Tyson Benson for this critical webinar: Maintaining Compliance with iEdison: A Practical Guide for Universities. In this one-hour session scheduled for January 25th, Mr. Benson will provide practical guidance on how to manage these complex compliance responsibilities.

For complete details and to register, CLICK HERE.

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Johns Hopkins start-up licenses technology to treat cancers that resist immunotherapy


By Jesse Schwartz
Published: January 17th, 2018

A start-up from Johns Hopkins University is developing a platform of treatments for cancers that are resistant to immunotherapy. continue reading »

Get your free sample copy of Industry-Sponsored Research Management and qualify for a $100 discount! CLICK HERE NOW

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How micromanagement can kill a start-up


By Jesse Schwartz
Published: January 17th, 2018

In a recent blog post, Guillaume Catella, founder and CEO of start-up support company Creatella, offers insight on the ways that founders’ attitudes can harm their own companies – zeroing in on micromanagement as a deadly culprit many a start-up’s demise. continue reading »

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U of Chicago spinoff lands $3.5M in funding to develop novel treatment for food allergies


By Jesse Schwartz
Published: January 17th, 2018

A University of Chicago spinoff has secured $3.5 million in seed funding to develop its treatment for food allergies. continue reading »

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SUNY Oneonta spinout develops a cheaper, safer process for creating chemicals


By Jesse Schwartz
Published: January 17th, 2018

A professor at State University College at Oneonta has formed a company around her method of creating ecofriendly chemicals used in production of products ranging from inorganic LEDs to pharmaceuticals. continue reading »

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The Strategic Negotiator: A comprehensive manual for negotiating deals at the highest level


By Jesse Schwartz
Published: January 17th, 2018

The Strategic Negotiator breaks the mold on negotiation treatises, taking a singularly practical, real-world approach that you will refer to again and again as you prepare for critical dealmaking activity.

In this 800-page resource you’ll find powerful negotiation lessons delivered through case studies and examples that make complex concepts not only clear but interesting and readable. You’ll find virtually every situation you’ll encounter covered in this comprehensive resource by expert David Wanetick, CEO of the Institute of Strategic Negotiations.

Here are just a few of the critical areas covered:

  • how to create leverage
  • how to properly sequence contentious issues
  • how to negotiation around valuations
  • how to use agents effectively
  • how to manage concessions
  • how to overcome deadlocks and impasses

Tech Transfer Central is offering a $300 discount on this newly published resource. For complete details and a complete table of contents, CLICK HERE >>

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Miami U teams with Wright Brothers Institute to commercialize Air Force technologies


By Jesse Schwartz
Published: January 17th, 2018

Miami University and the Wright Brothers Institute (WBI) have partnered to accelerate the commercialization of technologies developed at the Air Force Research Laboratory (AFRL). continue reading »

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A $200 million fund for Arizona-based biotech start-ups is in the works


By Jesse Schwartz
Published: January 17th, 2018

Researchers and entrepreneurs in Arizona looking to start biotech companies may experience a boom in funding resources with the launch of a new multimillion-dollar fund. continue reading »

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U of Arizona start-up licenses technology to improve mine health and safety conditions


By Jesse Schwartz
Published: January 17th, 2018

A start-up out of the University of Arizona (UA) has licensed a technology that could improve health and safety among mining workers.

UA start-up GUIA is working to commercialize the innovation known as SMART (Systems for Managing Advanced Response Technology), which features sensors that can detect and report on the air quality in mines, ground stabilization, the location and body temperature of workers, and other factors. SMART also enables real-time communication across all mining operations.

According to the U.S. Department of Labor’s Mine Safety and Health Administration, there were 430 deaths from mining accidents over the past decade. SMART co-inventor Moe Momayez notes that the costs associated with a single mining accident can be devastating, sometimes reaching over $5 million per incident.

“GUIA is the only company on the market addressing this serious issue by offering a single, integrated technology,” says Momayez. “SMART Suite is at the vanguard of today’s available technologies to monitor mine environment [and] worker health, reduce operational risk and improve safety.”

Source: Phys.org

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TTOs link with third parties in bid to expand licensing of research tools


By Jesse Schwartz
Published: January 10th, 2018

While it is always a challenge to motivate faculty to disclose their innovations, many observers agree it is particularly difficult when it comes to the disclosure of research tools — mouse models, cell lines, antibodies, and so forth.

“We at UGA have perceived a lot of lack of responsiveness from our researchers to our requests for RT (research tool) disclosures, as opposed to the more expeditious filing of disclosures of more complex technologies,” notes Gennaro J. Gama, PhD, senior technology manager at the University of Georgia Research Foundation, Inc.

“We’re getting disclosures in, but they come with less detail,” adds Josh Mauldin, PhD, licensing manager with the University of Virginia Licensing & Ventures Group. “You sit with someone for hours and [then have to] say ‘Great, can you get me something in writing?’”

One of the strategies universities are employing in an attempt to meet this challenge is the establishment of partnerships with third parties, who in turn pay for interns to help in the process. For example, Gama has established a non-exclusive partnership with Kerafast, a provider of RTs for the academic and industrial community.

Kerafast, based in Boston, works with more than 150 institutions globally, offering their reagents and other research tools through an online platform. The platform allows the materials to be “quickly accessed without needing to go through the traditional Material Transfer Agreement process,” the company says. Kerafast does all the work involved in selling and delivering materials and pays royalties to its university partners based on those sales. “We therefore help providing labs save time and resources, while generating extra funding for further research. Procuring scientists can more easily discover and access unique reagents that are often unavailable elsewhere, while also funding the work of other researchers,” the company says.

“I’ve been here 15 to 16 years and always wanted to implement a robust research tools licensing program — especially antibodies,” says Gama. “It was very difficult for us to do that in the context of being a manager who already had a portfolio of technologies.” In addition, he points out, the identification of new tools is not simple. “You look into the literature, compare it with our databases — it’s very convoluted,” he says.

Gama knew the school had potentially thousands of tools, but he needed more information on them. Kerafast, as part of its onboarding process, provided interns to help dig into the school’s research tool portfolio. “Also, they’re a little different — more oriented to the creators of materials,” he explains.

In addition, Gama says, “They create pages briefly describing the research activities of the investigators that have materials with them — they’re unique that way. This gives us the opportunity not only to license but to make the materials and UGA research known beyond the academic environment.”

There is no cost to UGA, he adds. “They license the materials from us and then sell those materials,” he explains.

At the University of Iowa Research Foundation, Jane Garrity, PhD, associate director for outreach and engagement, is in the process of setting up a partnership with Ximbio, a non-profit that markets, distributes, and sublicenses reagents like antibodies, cell lines, and mouse models.

“When we started talking to them we had been looking at ways to streamline and outsource some of our material licensing,” Garrity shares. “First off, in terms of the workload for licensing associates these are typically low-value deals, but they take time to negotiate. One antibody at a time is not necessarily the most efficient [way to go].”

In addition, she continues, the partnership offers a way to improve service to inventors. “Lots of times when we get potential licensees we have to reach out to the inventor to get all the technical information on an antibody or cell line; there is a lot of negotiation and it can be a pretty big time commitment for them,” says Garrity.

Garrity says she also looked at Kerafast and other companies before choosing Ximbio. “First, they seemed to have a pretty broad range of things they worked with — like mouse models, bacteria, plasmids,” she says. “It’s not like working with one company for one material. The other thing that appealed to us is that they actually will sublicense the materials so they can work with another company that’s selling antibodies.” Some schools might prefer separate licenses, she notes, “but we like the time savings.”

A detailed article on expanding research tool licensing through third party arrangements appears in the December issue of Technology Transfer Tactics. To subscribe and access the full article, plus hundreds of best practices and success strategies for TTOs in the publication’s online archive, CLICK HERE.

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