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TTOs standing ground on infringement, more willing to sue


By Jesse Schwartz
Published: February 22nd, 2017

Universities are increasingly finding the courage and the resources to stand up and fight when their patents are infringed, with the University of Minnesota’s lawsuit against Gilead Sciences just the latest in a series of challenges to powerful companies. The stakes are high enough for UM to risk defeat, and that calculation is likely to be the determining factor when other schools decide whether to pursue litigation.

UM is suing Gilead for patent infringement, alleging that the company’s highly successful sofosbuvir-based medications violate the school’s patent based on a discovery by researcher Carston Wagner. The lawsuit names specific drugs using the patent — Sovaldi, Harvoni and Epclusa — that have come to be essential in the treatment of hepatitis C. Sofosbuvir was approved for medical use in the United States in 2013. A 12-week course of treatment costs about $84,000 in the U.S.

By the time UM filed suit in August 2016, Gilead had earned more than $8 billion on the drugs in just the first six months of that year. UM claims the drug was a direct product of Wagner’s research, while Gilead says it doesn’t owe UM anything because the patent is invalid and the pharmaceutical company has the sole right to commercialize sofosbuvir.

“The University of Minnesota did not invent sofosbuvir, nor did they contribute to its development,” the company declared in a statement after the lawsuit was filed. “We believe their patent to be invalid and not infringed by the sale of Gilead’s medicines for chronic hepatitis C.”

UM disagreed strongly enough to pursue litigation, and the amount of money involved was most likely a driving factor in the decision. “Gilead has reaped tens of billions of dollars in sales of those drugs, without the University’s authorization and without compensating the University,” the lawsuit states. “The University invests heavily in the important and groundbreaking work of its professors, and it takes seriously its role in defending their and the University’s intellectual property rights.”

The university’s lawsuit seeks “all damages adequate to compensate it for Gilead’s infringement, in no event less than a reasonable royalty.” The hep C drugs have been a major driver and a huge blockbuster for Gilead, with reported sales between 2014 and 2017 of near $50 billion. Using a royalty rate of 5%, a victory in court could mean a payday for UM of $2.5 billion.

UM declined to comment on the case except to send a statement reiterating its confidence in the university’s position. “The University is seeking to protect the investment it has made in valuable research and development, and the resulting patent rights it has been awarded by the United States Patent Office,” the statement says. “The University believes that Gilead has infringed on those rights without going through the proper procedures to license our patent. We feel that we must defend these intellectual property rights.”

Litigation like the UM lawsuit indicates that universities are warming up to the idea that fighting for their patent rights is worth the effort and expense, says Joshua H. Haffner, JD, an attorney with Haffner Law in Los Angeles. The UM case continues a trend of schools stepping up and demanding payment for use of their patents, he notes. Carnegie Mellon University settled a patent infringement case with Marvell Technology Group for $750 million in 2016, and later that year a jury ordered Apple to pay the University of Wisconsin more than $234 million for using its microchip technology in iPhones and iPads without permission. In 2015, a jury awarded Boston University more than $13 million from three companies that infringed on its patent for blue light emitting diodes (LEDs).

“This trend is continuing because they’re making money off the cases,” Haffner says. “Patent infringement cases can be very profitable, and with every win by a university others are looking at that and saying maybe they could reap the same rewards. There are other principles at play, like protecting the inventors and the principle of ownership, but really if the invention is not making money those principles tend to fall by the wayside.”

A detailed article on the UM’s infringement action against Gilead, and the underlying trends in universities’ willingness to protect their patents in court, appears in the February issue of Technology Transfer Tactics. To subscribe and access the complete article, along with the publication’s 9+ year archive of success strategies, case studies, and best practices for TTOs, CLICK HERE.

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USPTO hands CRISPR rights over to the Broad Institute, but UC is still holding out hope


By Jesse Schwartz
Published: February 22nd, 2017

In the highly publicized, hard-fought dispute over a revolutionary gene editing technology known as CRISPR, the US Patent and Trademark Office has handed the rights to the Broad Institute of Harvard and MIT, defeating the University of California — for now. continue reading »

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Determining Inventorship for University IP


By Jesse Schwartz
Published: February 22nd, 2017

The legal standard for inventorship is complex and can be particularly difficult in the context of university research. While filing a patent involving sole inventorship is a breeze, it’s rarely the case in the university setting. Joint inventorship is more common, and it is necessary to evaluate whether the contribution of each individual in the lab — including students and post-docs — constitutes inventive activity.

Even more complexity arises when researchers and labs from more than one institution are involved, or when a scientist with a corporate partner has contributed to the innovation. Things can start to get sticky, egos get bruised, and relationships with key inventors and partners can get damaged. Additionally, incorrectly determining inventorship can lead to patenting and commercialization delays and costly legal headaches.

But, there are strict guidelines set forth in the Patent Act to determine inventorship. This important webinar will help you and your staff fully understand the parameters of each type of inventorship and avoid the damaging consequences of inventorship disputes. Technology Transfer Tactics’ Distance Learning Division has secured patent attorney Sherry L. Murphy of Myers Bigel to lead this important webinar: Determining Inventorship for University IP, scheduled for March 16.

For complete details and to register, CLICK HERE.

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Temple U start-up looks to revolutionize treatment of inflammatory bowel disease


By Jason Norris
Published: February 22nd, 2017

A Temple University start-up is trying to change the way inflammatory bowel disease is treated. continue reading »

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U of Alabama-Huntsville gets boost from tech entrepreneur to build start-up incubator


By Jesse Schwartz
Published: February 22nd, 2017

Philanthropist and tech executive Dorothy Davidson has provided a $5 million gift to the University of Alabama-Huntsville (UAH) to support the launch of a new start-up incubator. continue reading »

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Policy and Practice Governing Faculty Inventors: Protecting Your University While Building Solid Relationships for Lasting Success


By Jesse Schwartz
Published: February 22nd, 2017

Establishing, reviewing, and revising policies and practices that govern sensitive issues surrounding the commercialization of faculty research is no easy task. From IP ownership and conflicts of interest to faculty incentives and disclosure management challenges, the policies and strategies you use form the foundation of your faculty relationships while also serving as a firewall against compliance problems, legal disputes, and public relations nightmares.

Policy and Practice Governing Faculty Inventors: Protecting Your University While Building Solid Relationships for Lasting Success is a four-hour collection of distance learning programs that identifies best practices and proven strategies from your peers across the country who have successfully tackled policy issues and implemented key practices to protect the university while also building solid relationships with inventive faculty.

The four programs included in the collection are:

  • Blurred Lines and Gray Areas: Managing Conflicts of Interest in University Tech Transfer and Sponsored Research
  • Departing Faculty: How to Protect University IP, Avoid Legal Disputes, and Preserve Funding
  • Amending University IP Ownership Policies to Boost Disclosures and Corporate Interest
  • Incentivizing University Faculty for Commercialization Activity

For complete details or to order, CLICK HERE.

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Cardiff University spinout lands FDA approval for its “smoke” clearing surgical technology


By Jesse Schwartz
Published: February 22nd, 2017

A spinout of Cardiff University in Wales, UK, has secured approval from the U.S. Food and Drug Administration (FDA) for a device that improves visibility during abdominal surgery procedures. continue reading »

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Comings and goings


By Jesse Schwartz
Published: February 22nd, 2017

The University of Arizona (UA) Eller College of Management has chosen seasoned entrepreneur Remy Arteaga to lead its McGuire Center for Entrepreneurship. Arteaga has worked in start-ups, accelerators and corporate innovation programs for over 20 years. After his time managing tech companies, he entered the academic sphere, taking charge of entrepreneurship centers at schools including the University of Colorado and Stanford.

“I decided to — instead of being focused on shareholder value, my wealth and myself — to look outward and look at the impact I can have in the world around me, specifically in an entrepreneurship center,” says Arteaga. “Everything that I see tells me that there’s a movement to really make Tuscon a solid entrepreneurial community. In addition to that, there is a clear demand for entrepreneurship on campus.”

The U.S. News & World Report ranked UA’s McGuire Center for Entrepreneurship third among undergrad programs and fifth out of the country’s top graduate entrepreneurship programs. The center offers curricular and co-curricular courses to prepare students for careers in innovation and business leadership. As director, Arteaga will manage the center’s various programs and courses.

“I am thrilled we were able to attract Remy — a person of his caliber,” says Paulo Goes, dean of the Eller College of Management. “We have great plans for the future.”

Source: The Daily Wildcat

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Study finds that, for life science start-ups, timing is everything


By Jesse Schwartz
Published: February 15th, 2017

A recent study from professors at Simon Fraser University (SFU) in Canada finds that timing is crucial when it comes to succeeding as a life science start-up.

According to SFU professors Elicia Maine and Jon Thomas, an inventor’s decision-making after a scientific breakthrough could make the difference between commercial success and failure, whether it’s through the publication of findings, the launch of a start-up, or the creation of R&D partnerships.

“Canada has an exemplary record in scientific research but lags behind when it comes to creating long-term value from science-based ventures,” says Maine. “Our research looks at ways in which we can help ventures get these innovations out of the laboratory and into the commercial market by improving their strategic timing.”

Maine and Thomas looked deeply into various nanobiotechnology drug delivery start-ups. They found that companies that had reached an Initial Public Offering (IPO) had all employed elements of strategic timing. One strategy, for example, is to pursue broad patents on technologies while they’re still in the university lab. Maine and Thomas also argue that life science start-ups should wait to launch until the technology is closest to commercial viability, making venture capital investment more likely.

“Building on the results of our study, Canadian scientist-entrepreneurs aiming to launch science-based spinoffs can use strategic timing to better position their ventures for success and social impact,” says Thomas.

Source: Phys.org

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Lessons Learned from Small Tech Transfer Offices That Pack a Big Punch


By Jesse Schwartz
Published: February 15th, 2017

Even though there are some drawbacks in being a smaller tech transfer office, there are some great advantages as well. For instance, a smaller office can be quicker, more efficient, more creative, and less bureaucratic.

By not having bountiful resources at their fingertips like some of the “big players,” these offices and their staffs are forced to be more creative with their commercialization flow, licensing deals and innovation triage, and financial and legal resources because they are always expected to do more with less. That dynamic often leads to innovative strategies and tactics — and ideas for saving time and money — that can benefit all TTOs, regardless of their size.

That’s why Technology Transfer Tactics’ Distance Learning Division has secured two TTO directors from small offices to lead this practical, strategy-filled webinar: Lessons Learned from Small Tech Transfer Offices That Pack a Big Punch, scheduled for February 24th. For complete program and faculty details or to register, CLICK HERE.

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5 things start-ups should consider when choosing a venture firm


By Jesse Schwartz
Published: February 15th, 2017

According to Andrew Dudum, co-founder and partner at San Francisco-based venture firm Atomic, it’s important for the long-term health of a start-up that — immediate cash needs notwithstanding – VC partners should be carefully selected.

“Your VC firm will be your critical advisor moving forward and can provide guidance and company-altering insight,” says Dudum. Given this, here are his five tips for choosing a venture firm: continue reading »

Industry-Sponsored Research Management

DON’T MISS THIS CHARTER OFFER FOR INDUSTRY-SPONSORED RESEARCH MANAGEMENT, the all-new publication on attracting and managing corporate-sponsored research agreements. Save $100 and get the distance learning collection “Best Practices in Forming and Managing Industry-University Partnerships” (a $397 value) FREE! Click here for details >>

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U of Maryland spinoff aims to commercialize innovative device for gynecological surgery


By Jesse Schwartz
Published: February 15th, 2017

UM Ventures, the tech transfer arm of the University of Maryland, has licensed a novel surgical device to Baltimore-based SurgiGyn, Inc. continue reading »

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