Tech Transfer eNews Blog
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144 universities warn Congress that pending patent legislation would harm U.S. innovation


By David Schwartz
Published: March 4th, 2015

A group of 144 universities has warned the U.S. House and Senate Judiciary Committees that pending legislation on patent litigation abuses is too broad and could actually weaken the nation’s patent system and restrict the flow of technologies from universities to the marketplace.

In a letter to committee leaders, the universities claim the legislation would make it more difficult and expensive for all patent holders, including universities, to defend their patent rights. While the legislation is aimed at stopping patent “trolls” who take advantage of the system to sue and collect damages for infringement, the letter argues that the legislation goes too far and would restrict even rightful patent owners from protecting their intellectual property.

“American universities and associated technology transfer foundations and organizations stand ready to work with you to address the patent litigation abuses we all agree are a problem,” the letter reads. “We are deeply concerned, however, that much of the patent legislation currently being discussed in Congress, including the Innovation Act, H.R.9, goes well beyond what is needed to address the bad actions of a small number of patent holders.”

The universities said they would support patent legislation that is “targeted, measured and carefully calibrated to safeguard this nation’s global leadership in innovation.” The group also says it is hopeful that committee members will consider a number of recent judicial and administrative actions that have already led to a significant reduction in patent litigation.

Most of the participating universities are members of the Association of Public and Land-grant Universities and/or the Association of American Universities.

“University technology transfer provides a rich return on both public and private funding for basic research in the form of countless innovative products and services that today benefit the public, create jobs and contribute to U.S. economic competitiveness and global technological leadership,” the letter says. “It depends on a robust patent system that provides strong protection for inventions, enabling universities to license these patented inventions to private sector enterprises to create socially beneficial products and services.”

Source: AAU

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SBIR/STTR Funding: Strategies for Submitting a Winning Application


By David Schwartz
Published: March 4th, 2015

The Small Business Innovation Research and Small Business Technology Transfer programs can be critical and significant sources of funding for university innovations and start-ups. And with nearly $2 billion in funding being awarded each year, university researchers, start-up founders and TTO staff must understand how to ensure their applications stand apart from the herd.

That starts with knowing what key content to include in your application and understanding the review process. Knowing the critical factors that lead to success can make a huge difference in determining whether you get funded — and ultimately in whether your research or early-stage venture ever makes it to the commercial marketplace.

That’s why Technology Transfer Tactics’ Distance Learning Division has scheduled this can’t-miss webinar: SBIR/STTR Funding: Strategies for Submitting a Winning Application. Join SBIR/STTR funding consultant and former NIH scientific review officer Geoffrey White, PhD, on April 14th, when he’ll address the key challenges facing SBIR/STTR applicants and offer expert guidance for ensuring a successful application.

For complete program details and to register, CLICK HERE >>

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Foreign outposts for TTOs increase opportunities, but come with challenges


By David Schwartz
Published: March 4th, 2015

Opening an extension of your tech transfer program in another country is not like opening one across the state, especially when the other country is as culturally and politically different as China. But some TTO programs are finding that the opportunities for commercialization make the effort worthwhile. Just know what you’re getting into before you commit to the idea, experienced TTO leaders say.

Cultures don’t get much farther apart than Nebraska and China, but that hasn’t stopped the University of Nebraska Medical Center (UNMC), which recently opened a fully staffed satellite office in the Shanghai Free Trade Zone, the first tech transfer office there. Known as UNMC-China, the satellite operation officially opened its doors in October 2014, and is designed to create deeper cooperation between UNMC and Chinese industry in the biomedical and healthcare education sectors.

Shanghai was chosen partly because it is the most westernized Chinese city and the free trade zone offers an entry point for American business. Dixon explains that UNMC-China will focus on three core areas: Improve international collaborations, share knowledge, and commercialize UNMC innovations in a vast Chinese marketplace.

UNMC already has a 10-year track record of successful student and faculty exchanges, as well as several UNMC inventions licensed to Chinese companies, he notes. In addition, the Shanghai office is expected to encourage more collaboration with Chinese medical schools and hospitals.

UNMC began looking into expanding its footprint and improving its tech transfer opportunities overseas about four years ago, says Michael Dixon, president and CEO of UNeMed Health Consulting Services, the UNMC arm that operates the office in China. University leaders hoped that establishing UNMC-China as a wholly owned foreign entity would build on the existing ties and help the university expand its tech transfer efforts into China’s rapidly growing economy.

The work is paying off. The university already has a deal with one biomedical company and is discussing terms with two others, Dixon reports. In addition, UNMC-China offers consulting services to local entrepreneurs and investors, particularly in the healthcare field. “There are some opportunities for us to help them make a big leap to build very western-type medical facilities,” Dixon says. “For tech transfer, this gives us a footprint and an individual in Shanghai who is focused on helping us identify people to work with and also [to identify] technologies. We’re excited about the opportunities we’re starting to see, opportunities that we might not be realizing without having boots on the ground in Shanghai.”

The path to an operational China office was long and, at times, difficult, says D.J. Thayer, UNeMed’s director of international and domestic business affairs, who oversaw the 18-month creation of UNMC-China. Practical challenges abounded, starting with the language barrier and then moving on to the completely different culture of China, he says. When the university got serious about establishing an office in China, one of the first steps was to hire a licensing expert who is fluent in Mandarin.

“Setting up a company in China is nothing like setting up a company in this country. It definitely was an exercise in perseverance and patience,” Thayer says. “You better be ready to turn over everything – your passport, all sorts of financial information, everything about yourself.”

Simply opening a bank account in China was a surprisingly difficult and long process. UNMC had to hire a local attorney in Shanghai to represent them in person for the bank application, and then came all the requests for documentation.

Working with the Chinese government also proved to be challenging, Thayer says, not because they were resistant necessarily but because China takes a different approach to the start-up of any company. “The government authorities who are approving your admittance to the free trade zone must be comfortable with what you’re doing, what you’re trying to achieve, and your business scope. That has to be very clearly defined for them to feel comfortable in granting you that license,” he says. A detailed article on setting up foreign TTO outposts appears in the February issue of Technology Transfer Tactics. To subscribe and access the full article, as well as the subscriber-only archive filled with hundreds of case studies and best practices for TTOs, CLICK HERE.

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China considers bill that would incentivize research commercialization


By David Schwartz
Published: March 4th, 2015

China is considering a draft law amendment that aims to boost the commercialization of technologies developed at research institutions and universities. The proposed measure would revise the Law on Promoting the Transformation of Scientific and Technological Achievements, enacted in 1996, by introducing ways to motivate research and engage industry in helping to develop academic discoveries  for the marketplace. continue reading »

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Entrepreneurs: Beware the post-money trap


By David Schwartz
Published: March 4th, 2015

In his recent blog post, Albert Wenger, partner at Union Square Ventures, warns entrepreneurs not to neglect the post-money valuation of their companies. continue reading »

With The Ultimate University Incubator Benchmark Package you can save $200 on our best-selling reports: Top University Business Incubators Global Benchmark Report and Best Practices at Top University Business Incubators. Click here to order >>

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Why every start-up should create a financial model


By David Schwartz
Published: March 4th, 2015

In a recent post, start-up expert Martin Zwilling urges entrepreneurs not to dismiss financial modeling for their new businesses. “In reality,” he writes, “a simple Excel spreadsheet model customized around your assumptions can save you hours and avoid a wasted expense in validating alternative vendor and marketing decisions.” continue reading »

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The 4 best ways for start-ups to reach out to tech reporters


By David Schwartz
Published: March 4th, 2015

In his recent article for Entrepreneur, Zach Cutler, founder of trading firm the Cutler Group, offers start-ups a few tips on how to reach tech reporters. continue reading »

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New Mexico State developing improved carbon capture technology


By David Schwartz
Published: March 4th, 2015

A new technology developed by a New Mexico State University researcher could revolutionize carbon dioxide capture and have a significant impact on reducing pollution worldwide, according to the school. The Intellectual Property and Technology Transfer Office at NMSU’s Arrowhead Center is working to protect and commercialize the technology, which was developed by chemical and materials engineering doctoral candidate Nasser Khazeni. continue reading »

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Reference offers comprehensive coverage of post-grant patent practice


By David Schwartz
Published: March 4th, 2015

As PTAB becomes a critical venue in the intellectual property landscape, the reference Post-Grant Patent Practice has become more timely and critical than ever before. This detailed guide helps patent and IP professionals navigate all USPTO post-issuance procedures.

Written by four former USPTO Administrative Patent Judges, this 870-page resource captures the full nuance of post-grant practice and procedures. Post-Grant Patent Practice analyzes the procedures introduced by the AIA — both in text and in charts — explaining them from pre-filing considerations through appeal to the U.S. Court of Appeals for the Federal Circuit, or to a district court and then the Federal Circuit. This comprehensive reference is a must-have for patent practitioners. For complete details and to order, CLICK HERE >>

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Rutgers new online Business Portal reaches out to industry


By David Schwartz
Published: March 4th, 2015

The Corporate Engagement Team at Rutgers, The State University of New Jersey, has created a new version of its Business Portal, a website designed in consultation with industry leaders to serve corporate partners in the state. continue reading »

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Comings and goings


By David Schwartz
Published: March 4th, 2015

The Office of Technology Transfer and Economic Development (OTTED) at the University of Hawaii (UH) has hired Leigh-Ann Miyasato, Honolulu-based attorney and entrepreneurship expert, to serve as a technology licensing associate. Miyasato will focus on creating legal contracts and incentive programs for university tech transfer. Prior to joining UH, Miyasato founded the Entrepreneurs Foundation of Hawaii and most recently served as its executive director. She also led start-up accelerator HiBEAM and venture capital fund DragonBridge Capital LLC, and served as a commercial and civil litigation attorney for Alston Hunt Floyd & Ing. “She comes to us very highly regarded by the local entrepreneurial community,” says Vassilis Syrmos, vice president for research and innovation at UH. “We expect her to greatly contribute to our efforts in support of the Hawaii Innovation Initiative.” Source: Pacific Business News

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Tech transfer office morphs into accelerator in new commercialization model


By David Schwartz
Published: February 25th, 2015

The University of Cincinnati has completely revamped its approach to tech transfer, and so far the new model appears to be a success. After launching a pilot program of its UC Technology Accelerator for Commercialization in 2012, it has provided funding for 13 new projects, with five more anticipated shortly, and launched four new start-ups while increasing licensing activity. Three of the start-ups have received funding from the Ohio Third Frontier program. Even more significantly, the Accelerator itself was awarded $1 million in November by Third Frontier.

What makes this model so unique? For one thing, notes Dorothy H. Air, PhD, associate vice president for entrepreneurial affairs and technology commercialization, “instead of having both an accelerator and TTO office, we became the accelerator. I don’t know of any other university that has taken that approach.”

“When I first got involved with UC it was a lot like other TTOs I had dealt with, taking disclosures, taking a lot of time to put together provisional patents, very stressed, and not spending much time digging into the IP before it was filed,” recalls Dan Kincaid, CEO of Sense Diagnostics and an Entrepreneur in Residence with the Accelerator. “What really changed is that UC has put commercial analysis into the process very early on to decide what to pursue for patents, and to make sure those they do pursue are better funded and much more attractive to outside industry. It works well with the Accelerator because they put money and staff time into developing projects further than if they had done a provisional patent and tried to market it to industry. In theory, it should increase efficiency and return on investment.”

In short, Air explains, the university’s entire approach to tech transfer has become proactive rather than responsive. For example, she says, “we now reach out to faculty members. I just met with someone, not about a specific technology but about a concept, to put together a team that can grow it to be an Accelerator application later. Faculty members are not always looking for that — or for commercial aspects.”

In addition, she notes, in the past provisionals were filed without a lot of due diligence to “protect our territory.” Now, she says, “we look at the commercial potential first.”

“Most universities interpret the total number of patents as potential for commercialization; our patent numbers are anticipated to go down, but more things will have a greater chance,” adds William S. Ball, MD, UC’s vice president for research. “We realized we were spending two to three times the amount of money to protect IP than we were on making IP; it turns out 95% of universities in the U.S. have that approach. We began a whole process of reassessing what to patent, and decided we would only patent what scalability led to the next iteration. If patented things were scalable, why not put them into the right environment to make them succeed rather than have success by chance? Patent less, but put those things into the Accelerator as a function.

“I still think the typical TTO is really populated with people who ensure that the patent is valid,” he continues. “They do a great job of assessing whether something is patentable and maintained, and look out [to ensure] that it is not infringed. In other words, for most TTOs the Holy Grail is still focused on the process rather on than the outcome. What we feel is important is focusing more on the outcome we want. If you had an ideal situation for creating an outcome you would create a TTO that looks more like a start-up company — R & D, investing in a product, marketing, and selling a product.”

 “It used to be when a faculty member made a disclosure it was the first step towards filing  patent protection,” adds Air. “Now we say, ‘Let us look at it and if we think there’s something there, we have to look at it as potentially an Accelerator application, and we’ll only file if there is commercial potential. A detailed article on the U Cincinnati approach appears in the February issue of Technology Transfer Tactics. To subscribe and access the full article, along with a complete 8-year archive of best practices, detailed case studies, and proven success strategies for TTOs, CLICK HERE.

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