Tech Transfer eNews Blog
Technology Transfer Tactics sample issue

How universities and start-ups can speed up the licensing process


By David Schwartz
Published: December 7th, 2016

In her recent blog post, Kirsten Leute, an executive with Osage University Partners who formerly worked in Stanford University’s tech transfer office, discusses ways in which the licensing process between start-ups and their alma maters could be simpler and, most importantly, shorter.

“Looking back on my own negotiations, it was a rare event to finish a full start-up license in a month and a half,” Leute writes. A four- to six-month process was typical, she adds. She cites a number of factors contributing to delays — drafts being sent back and forth, payment obligations, delays at the law firm, reviews of potential conflicts-of-interest at the university, and so on. “At the end of the day, if people don’t negotiate a lot on a deal, do they end up feeling confident they got the right deal?” she poses.

Still, she believes there are steps that can be taken to streamline the licensing process. Here are her suggestions for each player in the negotiating and contracting cycle:

For tech transfer offices:

  1. Highlight the terms in the deal that are non-negotiable, such as those required by the Bayh-Dole Act. There should only be a few, but pointing them out directly will save time both for you and your potential industry partner.
  2. Train your licensing staff to be consistent amongst each other in their negotiations. “Yes, these may shift between technologies and deals.” says Leute. “But one common complaint from VCs is that the deals are radically different depending on which licensing officer is doing the negotiating.”
  3. Don’t employ just one licensing officer for each deal. A team of officers will learn from each other’s varying backgrounds and come up with more rounded ideas. Plus, if one officer leaves the university, the work and thought put into the deal will remain intact.

For start-ups and VCs:

  1. Try hiring an attorney for the deal who has gotten along with the university’s tech transfer office in the past. As Leute puts it, “Nothing stalls a deal like an attorney or firm that has limited experience negotiating licensing deals with academic institutions.”
  2. Don’t obsess over every detail of the agreement. As long as you are in good standing with your university partner, they will work with you if you approach them later seeking changes.
  3. “Don’t try to account for every possibility,” says Leute. “You are a start-up. You will pivot.”

For both sides:          

  1. Start off by determining and exchanging your priorities. You could do this with a “Top 10” list of what you want from the deal, then trade lists with the other party. The start-up will likely prioritize financial terms and the scope of the licensing rights; the university will prioritize

non-negotiable terms concerning risk management, use of name and publication rights. Note to start-ups: don’t try to negotiate these.

  1. Over-communicate, whether it’s in person, through e-mail, or over the phone. “As a technology transfer professional, my best experiences were with start-ups who didn’t just provide me an annual written update, but with whom we had a running dialogue throughout the year,” writes Leute. This helps tech transfer offices to be more prepared when requests for amendments come up.
  2. The previous step can be applied just as equally to VC firms. According to Leuke, “very few venture capitalists and technology transfer officers interact on a regular basis. Change that, and it will likely change your interactions.”

Source: Osage Univ. Partners

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Protect Your University’s Patents while Avoiding “Troll” Allegations: Legal and Public Relations Guidance that Preserves Your IP and Your Reputation


By David Schwartz
Published: December 7th, 2016

Despite the massive value inherent in their patents, universities rarely go to court to protect their IP rights. And on the rare occasions when they do, critics are quick to throw accusations of greed and troll-like behavior, even when the only way to preserve the innovation for the greater good is to defend it against infringers in the court system.

Harvard University expertly sidestepped public and internal criticism when they filed suit against Micron and Global Foundries for infringing the school’s valuable patents. They chose to tell their story proactively in a public forum to set the record straight on why they were filing, why it was imperative to protect publicly funded research, and how the suit supports their researchers’ rights as well as the university’s.

Technology Transfer Tactics is offering this essential distance learning program to help you identify when to assert your IP rights, and how to do it in a way that staves off bad PR related to misconceptions of troll-like behavior. In Protect Your University’s Patents while Avoiding “Troll” Allegations: Legal and Public Relations Guidance that Preserves Your IP and Your Reputation, scheduled for December 15, you’ll find out how this PR tactic worked, and how your university can learn from Harvard’s example, as well as other universities’ experiences.

For complete program details and to register, CLICK HERE.

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As their mission expands, TTOs adopt new metrics to showcase a broader view of contributions


By David Schwartz
Published: December 7th, 2016

Performance metrics have long been a topic of hot debate among technology transfer professionals as TTOs try to find new and better ways to document their value. While TTOs still tally things like disclosures, patents and licenses, many offices are now going well beyond these traditional data points, in some cases utilizing more sophisticated approaches that aim to drive certain behaviors and ultimately capture the true contributions of a hardworking office. However, changes in this area are not just designed to do a better job of documenting productivity. They also reflect an expanding “to do” list, handed down to TTOs by states, communities and the institutions they serve.

The model for TTOs has transformed from what it was back in the early-to-late 1990s when licensing officers were primarily focused on filing patients and getting things licensed in a few traditional areas, explains Ragan Robertson, a technology transfer principal at the University of California at Los Angeles and chair of AUTM’s licensing activity survey committee. “Technology transfer organizations have had to change substantially from that model in order to become more integrated in how universities are acting,” he says. “Universities have become more translational-focused and more collaborative-focused … so our TTOs need to be encompassing this market change.”

For instance, universities and their TTOs are now being asked to make more of an impact on regional economic development. As a result, the specific performance metrics used by TTOs need to be adjusted accordingly, and that the push for economic impact has focused a much bigger spotlight on start-ups. “The U.S. economy has shown time and time again that small business is where jobs are created more often than with any of the big giant companies, and so from a TTO’s perspective, we can really affect what can happen by helping those start-ups,” explains Robertson.

That still begs the question, how do you measure the level of support that is being provided to start-ups? “I think TTOs are looking at this and saying you know what? We need to have a bigger footprint within the world where money exists. And so a lot more TTOs are looking at building those relationships with angel investors and venture capitalists,” observes Robertson. “One metric that is becoming more apparent is how many connections you have. That is an arbitrary number a lot of the time, but it can help identify that network.”

Some TTOs are measuring the number of connections they have as well as the number of interactions they have had with these key contacts in a given period of time, notes Robertson. “Having those relationships can go very far,” he says. “It is something that is becoming vital for TTOs.”

While universities usually do a simple tally of the number of start-ups they help to launch in a given year, most technology transfer professionals now recognize this number is not very revealing, given that many start-ups do not survive for long. “We as an industry need to look at how a start-up is counted … and have a better definition of what a start-up is,” notes Robertson. “My personal opinion is [that a start-up should be counted] when it hits a certain level of investment.”

When someone who is not a founder or an affiliated researcher provides investment, that is when you can begin to discern whether a new enterprise has legs, suggests Robertson. “That doesn’t mean, though, that we shouldn’t continue work with these more nascent start-up entities because they are the ones that are going to turn into [companies] that have firmer foundations [later on], so you may need to have some sort of pre-startup number,” he adds.

A detailed article on trends and changes in TTO metrics appears in the November issue of Technology Transfer Tactics. To subscribe and access the full article, along with the publication’s entire 9-year archive of best practices and success strategies for tech transfer offices, CLICK HERE.

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Korean tech institute sues Samsung and other tech companies for patent infringement


By David Schwartz
Published: December 7th, 2016

Samsung Electronics and two other tech companies are being sued by the Korea Advanced Institute of Science & Technology (KAIST) for infringing on a key technology related to the making of processors. continue reading »

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U of Ottawa launches new program to give students experience launching and managing startups


By David Schwartz
Published: December 7th, 2016

The University of Ottawa has launched a new co-op program to help students gain experience launching and working in startup companies. The university is partnering with the Royal Bank of Canada (RBC), which has agreed to contribute $450,000 Canadian over three years to support students working for start-ups. continue reading »

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Purdue startup develops first-of-its-kind app that can detect concussions


By David Schwartz
Published: December 7th, 2016

A student start-up from Purdue University aims to provide the first ever mobile app that can detect concussions. continue reading »

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U of Melbourne licenses novel colorectal cancer test to Genetics Technologies


By David Schwartz
Published: December 7th, 2016

Molecular diagnostics company Genetic Technologies Ltd. has signed an exclusive worldwide license agreement with the University of Melbourne to develop and commercialize a new test that assesses the risk of colorectal cancer (CRC). continue reading »

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Just released: The 2017 Life Science Venture Capital Directory


By David Schwartz
Published: December 7th, 2016

The 2017 Life Science Venture Capital Directory has just been released, and now’s your chance to receive comprehensive contact information for virtually all life science venture capital funds. Our contact database of more than 350 life science VCs – which you can download and incorporate into your own VC research, includes:

  • The fund name
  • Website URL
  • Funding inquiries contact details including e-mail
  • Link to team member list

Once you purchase the 2017 Life Science VC Directory, you can incorporate it into your own research and marketing efforts without spending the countless hours you’d need to compile this comprehensive list on your own. And with an introductory price of just $295, it’s a deal you can’t afford to pass up. Just CLICK HERE and in minutes you’ll have all the contacts you need to put your investor search on the fast track.

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Johns Hopkins licenses technology targeting diseases related to fibrosis and inflammation


By David Schwartz
Published: December 7th, 2016

Johns Hopkins University has licensed a potential treatment for a variety of diseases related to fibrosis and inflammation. In its agreement with Allakos, a private clinical stage biotech company, JHU grants exclusive rights to the patents surrounding Siglec-8, a receptor that is linked to both rare and widespread diseases. The license agreement covers both therapeutic and diagnostic applications. continue reading »

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Brain drain worries grow as major tech companies poach top university researchers


By David Schwartz
Published: December 7th, 2016

A number of big tech companies are trying to recruit top university researchers – and in many cases succeeding — a trend that could be detrimental to the next generation’s adeptness in science and technology innovation, critics are saying. continue reading »

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U Chicago start-up is turning excess energy from solar and wind power into storable, usable gas


By David Schwartz
Published: December 7th, 2016

A University of Chicago start-up is developing a way to store and repurpose the excess energy produced by wind and solar power. continue reading »

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Comings and goings


By David Schwartz
Published: December 7th, 2016

• The University of Utah (the U.) has chosen Keith Marmer, an experienced professional in tech transfer and entrepreneurship, to serve as executive director of its technology and venture commercialization office. Marmer previously served as chief business officer at the University of Pennsylvania’s Penn Center for Innovation, leading the organization’s daily commercialization activities. Before that, he directed the tech transfer office at Penn State College of Medicine. Marmer has also launched and managed four businesses, including a venture capital firm that backs life science start-ups.

“Having only established my venture capital company in 2015, there was really only one variable that could cause me to change career tracks, and that was the University of Utah,” comments Marmer. “In the technology commercialization space, the U. is recognized as a leader and an innovator. When I learned they were searching for a new executive director, I knew I had to jump at the chance.”

Source: Deseret News Utah

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• TEC Edmonton, a Canadian start-up accelerator in partnership with the University of Alberta and Edmonton Economic Development Corporation, has announced that its executive vice president of business development Dr. Randy Yatscoff has received a lifetime achievement award from National Startup Canada. The Adam Chowaniec Lifetime Achievement Award, which is presented to only one candidate out of the entire country, recognizes an individual who has created a long-term impact on the growth and success of entrepreneurship in Canada.

“This award is really about the people who come together to be bigger than the sum of their parts,” says Yatscoff. “I’m grateful for the incredible people and teams I’ve worked with over the years that made this possible.” TEC Edmonton CEO Chris Lumb comments, “There is no more deserving person than Randy for this award. Randy brings passion, commitment and action to everything he does, and it’s an honor to work with him.”

Prior to his time at TEC Edmonton, Yatscoff, who has also taught and researched at several Canadian universities, spent over a decade in executive roles at various biotech companies. Yatscoff joined TEC Edmonton in 2008 as an entrepreneur-in-residence before serving as executive vice president of business development. He has directly or indirectly helped launch 15 university start-ups, turning academic research into products with real-world impact. In his current role, he manages a team that assists more than 80 start-ups each year.

Source: MarketWired

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